KSR v. Teleflex: In Support of the Status Quo

 KSR v. Teleflex (Supreme Court 2006).

By Dennis Crouch [dcrouch@gmail.com]

Background: Teleflex and its supporters have now filed their briefs in defense of the Federal Circuit’s methodology for determining whether a patent is “obvious.” [Copies of briefs are provided below]. The doctrine of nonobviousness is fundamental to our patent system.  In order to be eligible for a patent an invention must be both novel and non-obvious.  Novelty is generally narrowly applied to cases where the invention is identical to something already in the public domain.  Obviousness, however, is a more difficult beast and is intended to ensure that patent rights are only granted to inventions that move us a significant distance past the prior art. 

Obviousness has always been a “squishy” term, but over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed a somewhat objective nonobviousness doctrine using a teaching/suggestion/motivation (TSM) test. According to the test, when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art. One problem with any obviousness test is hindsight bias. It is all-to-easy to look-back and assert that an invention would have been obvious. One purpose of the objective TSM test is to avoid this type of hindsight bias.

KSR has asked the Supreme Court to rethink that approach and take a fresh look at the obviousness standard for patentability. The petition questions whether obviousness should require any proof of some suggestion or motivation to combine prior art references.

Question Presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"?

Interestingly, the Supreme Court has not heard an obviousness since well before the founding of the Federal Circuit. In that case (Sakraida 1976), the Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a).  Under the Sakraida standard, the Teleflex patent is arguably obvious.  In an article several years ago, Professor John Duffy identified this obviousness issue as one that should attract the Supreme Court’s attention.

[The Federal Circuit’s suggestion] test, which tends to make even seemingly trivial developments patentable, is entirely the Federal Circuit’s product.  It has no basis in the Supreme Court’s case law and may, in fact, be inconsistent with the Court’s most recent pronouncement on the subject (though that precedent is now more than a quarter century old).

Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S.Ct. Rev. 273, 340-41 (2003).  Now, Duffy, a former clerk of Justice Scalia, is part of the KSR team that is trying to change the rule of law. The KSR case itself concerns a patent covering a gas pedal for an automobile. KSR makes pedals for GM & Chevy trucks and was sued for infringement of the Teleflex patent.

A discussion of briefs in support of the petitioner are found here: Discussion of Breifs Supporting Petitioner.

What follows is a discussion of briefs in support of the respondent: (i.e., in support of the status quo).

Respondent Teleflex: Brief on the Merits

Settled Law: Respondent begins with a compelling exposition on the power of stare decisis. “Millions of patents” have issued based on the suggestion test, and modifying that test would in Hal Wegner’s words, “threaten the validity of literally hundreds of thousands of existing patents still in force.”

Non-Rigid Test: Respondent defines the suggestion test as a “flexible [test that] looks to any available indication that a practitioner in the art would have had some reason to select the elements of the invention from among the prior art and combine them in the manner claimed by the invention.”  Relying heavily on the CAFC’s very recent obviousness pronouncements of Dystar and Alza, the brief points out that a suggestion does not need to be found in prior art, but rather can be implicit in the nature of the problem, customer demand, similarity between references, knowledge of PHOSITA, wide knowledge of value of feature to be combined, etc.  [DDC: Query whether the broad application of implicit suggestions would constructively eliminate the rule.]

The suggestion test can be contrasted with the “synergy” test proposed by petitioner and the “extraordinary level of innovation” test from the Solicitor General. Those approaches essentially mirror the pre-103 requirement of an “invention.” According to Judge Rich, “The first policy decision underlying Section 103 was to cut loose altogether from the century-old term ‘invention.’”

Intellectual Property Owners Association (IPO) in Support of Respondent:

The IPO is an organizatoin of intellectual property owners. MBHB (where I am of counsel) filed the brief on behalf of IPO. IPO’s brief supports the motivation requirement as an objective but flexible and practical approach to the obviousness problem.  IPO hits on the hindsight problem:

[The test must rely on] objective evidence, not mere unsupported opinion or argument. Otherwise, the inevitable use of hindsight will tend to render meritorious inventions "obvious" by using the inventor’s own teachings as a roadmap to piece together prior art references in ways that would not have been obvious at the time of the invention.

IPO also takes-issue with any “synergy” requirement. Synergy occurs when the "the interaction of elements that when combined produce a total effect that is greater than the sum of the individual elements." There are many patent-worthy inventions, however, that lack true synergy. In addition, the Solicitor General’s proposed "extraordinary level of innovation" requirement goes too far. “Nothing in the patent statute suggests that patents should only be awarded to Nobel laureates.”

Paul Berghoff, Jeremy Noe, and Aaron Barkoff (of OrangeBookBlog) are on the brief.

American Intellectual Property Law Association (AIPLA) in Support of Respondent:

AIPLA’s brief is a fun read — it starts off with quotes from Billy Wilder and King Solomon, both of which give us pause on the question of hindsight.

What has been is what will be,
and what has been done is what will be done;
there is nothing new under the sun.

According to AIPLA, King Solomon wasn’t so wise — perhaps because his vision of the past was colored by hindsight. The CAFC’s test of obviousness is useful because it helps avoid hindsight.

TSM is a well-established, thoughtfully-analytic framework that provides certainty and uniformity in obviousness determinations while allowing proper flexibility. By requiring a showing of why someone of ordinary skill in the relevant art would think the invention obvious, it functions as a critical evidentiary device that prevents arbitrary decisions driven by hindsight.

As is typical of opposition briefs, the AIPLA correctly notes that the CAFC’s suggestion test does not require that the suggestion be explicit or written.

I can concieve of a strong [and thus far unstated] argument that it would be sensible to require that the suggestion be written and explicit.  At this point in history, we have more people writing than ever before and those people are each writing more than earlier writers. At the same time, search costs are dropping dramatically and will continue to drop. In this scenario, why would we need to allow the evidentiary nightmare of giving weight to previously unstated suggestions to find an invention obvious?

Professor Thomas Field of Franklin Pierce in Support of Respondent:

Professor Field looks at the CAFC and its role in the patent process.  Unlike its predecesor CCPA, the CAFC hears both administrative patentability and litigation based cases. That means that the CAFC must “confront the consequences of unwaranted grants.” 

If the problem is the grant of too-many patents, the CAFC has little to say there because the court has no role in granting patents except to occasionally rule that the BPAI’s bases for rejection are unsupported.

Pre- and post-grant opposition proceedings may be the answer, but those decisions are for Congress.

ABA in Support of Respondent:

ABA amicus briefs are always difficult to obtain becauase they need the support of both the IP Section and the entire ABA House of Delegates.  Here, the way to consensus was not to argue that the TSM test is the best test, but rather to note that it is useful, objective, and deeply rooted in the Supreme Court’s John Deere jurisprudence. In addition, the test is well settled, and messing with the test would have a far-reaching and complex impact on the economy and state of innovation.

If some elusive method not based on evidence were to be substituted for the present inquiry, hundreds of thousands of patents granted under the teaching-suggestion-motivation methodology would be immediately placed under a cloud.

Harold Milton in Support of Respondent:

Harold Milton drafted the claims being asserted by Teleflex and has filed a very interesting brief in support of Teleflex.  Interesting because he begins with a statement that the suggestion test is illusory, or at least a misnomer. There is no requirement that there be any specific statement of suggestion in the prior art. Nonetheless, the test is important to maintain an “objective standard of patentability” and “consistent evaluation.”  It also prevents chaos:

Without an objective standard, chaos would be multiplied across thousands of patent examiners, judges, juries, attorneys, etc. and would result in inconsistent decisions on patentability.

According to Milton, the Court should reject the suggestion test and stick to its prior decisions that obvious is found when there is a “mere selection of prior art elements combined to perform the identical function as they did separately in the prior art.”

Lee Thomason in Support of Respondent:

Thomason is a Kentucky-based patent attorney. One interesting aspect of his argument involves the law/equity distinction.  According to Thomason, challenges to validity are equitable in their origins as evidenced both by the recited equitable factors of 103(a) (“as a whole”) and by Blackstone’s recitation of the writ fo scire facias. As such, any changes to the rule should be to review obviousness decisions “according to the standard applied to equitable rulings.” Equitable review requires a full discussion of the record and results in more predictability.

[Please e-mail briefs in support of respondent to me at dcrouch@gmail.com]

Documents:

• On the Merits
• In Support of Petitioner
  • Petitioner's Brief on the Merits; [UPDATED WITH CORRECT VERSION]
  • Government's Brief in Support of Petitioner;
  • Law and History Professors (Sarnoff) in Support of Petitioner;
  • Law Professor (Strandburg) in Support of Petitioner;
  • Electronic Frontier Foundation in Support of Petitioner;
  • Judge Colianni in Support of Petitioner;
  • Intel and Micron in Support of Petitioner;
  • Progress and Freedom Foundation in Support of Petitioner;
  • Cisco and GM in Support of Reversal (Petitioner);
  • CCIA in Support of Petitioner;
  • Business Software Alliance in Support of Petitioner;
  • Time Warner, IAC, and VIACOM in Support of Petitioner;
  • AARP.
• In Support of Neither Party
  • IBM in Support of Neither Party;
  • Ford & DaimlerChrysler in Support of Neither Party;
  • DC Bar Assn (Eccelston);
  • Professor Hollaar.
• In Support of Respondent
• Respondent’s Brief on the Merits;
• Intellectual Property Owners in Support of Respondent;
• AIPLA in Support of Respondent;
• ABA in Support of Respondent;
• Automotive Suppliers in Support of Respondent;
• Big Innovative Companies (3M, et. al) in Support of Respondent;
• Technology Properties Limited in Support of Respondents;
• United Inventors Association in Support of Respondent;
• Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;
• Law Professors in Support of Respondent;
• Professor Tom Field (Franklin Pierce) in Support of Respondent;
• IPLAC in Support of Respondent;
• Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;
• Tessera, Qualcomm, and Amberwave in Support of Respondent;
• Science Professors in Support of Respondent;
• Lee Thomason in Support of Respondent.
• [Briefs also available at SCOTUS BLOG]
• Petitions Stage
  • Party Briefs
    • KSR’s Petition for Cert (Including the CAFC and District Court decisions in Appx. A & B);
    • Teleflex’s Brief in Opposition;
    • KSR Reply Brief (314 KB);
    • Teleflex Supplement.
  • Amicus Briefs
    • Government in support of petition;
    • 24 Law Professors in support of petition;
    • Progress Freedom Foundation in support of petition;
    • Microsoft, Cisco, Hallmark, et al. in support of petition.

Links:

• Discussion of Petitioner and Supporting Amici’s Briefs on the Merits;
• Discussion of Government's Brief in Support of Certiorari;
• Discussion of Microsoft’s Amicus Brief;
• Discussion of the CAFC decision;
• Discussion of Law Professors Brief;
• Discussion of In re Kahn;
• Discussion of Petition for Certiorari;
• Prediction Certiorari;
• Professor Wagner and Strandburg debate obviousness in Penn’s new online law reivew:PENNumbra;
• Prof Miller: KSR Lift-off!
• Prof Miller: Discussion of Gov’t Brief;
• Patent Hawk: Becoming Less Obvious;
• Patent Hawk: Hindsight Problem;
• Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link];
• Petherbridge & Wagner Empirical Article [link]
• Cotropia Article: [link].
• Shane Popp Article on Section 103 background [link]
• The Patent at issue: [link]

Cite as Dennis Crouch, “KSR v. Teleflex: In Support of the Status Quo,” Patently-O, available at http://www.patentlyo.com.

 KSR v. Teleflex (Supreme Court 2006).

By Dennis Crouch [dcrouch@gmail.com]

By Dennis Crouch [dcrouch@gmail.com]

Background: Teleflex and its supporters have now filed their briefs in defense of the Federal Circuit’s methodology for determining whether a patent is “obvious.” [Copies of briefs are provided below]. The doctrine of nonobviousness is fundamental to our patent system.  In order to be eligible for a patent an invention must be both novel and non-obvious.  Novelty is generally narrowly applied to cases where the invention is identical to something already in the public domain.  Obviousness, however, is a more difficult beast and is intended to ensure that patent rights are only granted to inventions that move us a significant distance past the prior art. 

Obviousness has always been a “squishy” term, but over the past twenty-five years, the Court of Appeals for the Federal Circuit has developed a somewhat objective nonobviousness doctrine using a teaching/suggestion/motivation (TSM) test. According to the test, when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art. One problem with any obviousness test is hindsight bias. It is all-to-easy to look-back and assert that an invention would have been obvious. One purpose of the objective TSM test is to avoid this type of hindsight bias.

KSR has asked the Supreme Court to rethink that approach and take a fresh look at the obviousness standard for patentability. The petition questions whether obviousness should require any proof of some suggestion or motivation to combine prior art references.

Question Presented: Whether the Federal Circuit erred in holding that a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. sec. 103(a), in the absence of some proven "'teaching, suggestion or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed"?

Interestingly, the Supreme Court has not heard an obviousness since well before the founding of the Federal Circuit. In that case (Sakraida 1976), the Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a).  Under the Sakraida standard, the Teleflex patent is arguably obvious.  In an article several years ago, Professor John Duffy identified this obviousness issue as one that should attract the Supreme Court’s attention.

[The Federal Circuit’s suggestion] test, which tends to make even seemingly trivial developments patentable, is entirely the Federal Circuit’s product.  It has no basis in the Supreme Court’s case law and may, in fact, be inconsistent with the Court’s most recent pronouncement on the subject (though that precedent is now more than a quarter century old).

Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 S.Ct. Rev. 273, 340-41 (2003).  Now, Duffy, a former clerk of Justice Scalia, is part of the KSR team that is trying to change the rule of law. The KSR case itself concerns a patent covering a gas pedal for an automobile. KSR makes pedals for GM & Chevy trucks and was sued for infringement of the Teleflex patent.

A discussion of briefs in support of the petitioner are found here: Discussion of Breifs Supporting Petitioner.

What follows is a discussion of briefs in support of the respondent: (i.e., in support of the status quo).

Respondent Teleflex: Brief on the Merits

Settled Law: Respondent begins with a compelling exposition on the power of stare decisis. “Millions of patents” have issued based on the suggestion test, and modifying that test would in Hal Wegner’s words, “threaten the validity of literally hundreds of thousands of existing patents still in force.”

Non-Rigid Test: Respondent defines the suggestion test as a “flexible [test that] looks to any available indication that a practitioner in the art would have had some reason to select the elements of the invention from among the prior art and combine them in the manner claimed by the invention.”  Relying heavily on the CAFC’s very recent obviousness pronouncements of Dystar and Alza, the brief points out that a suggestion does not need to be found in prior art, but rather can be implicit in the nature of the problem, customer demand, similarity between references, knowledge of PHOSITA, wide knowledge of value of feature to be combined, etc.  [DDC: Query whether the broad application of implicit suggestions would constructively eliminate the rule.]

The suggestion test can be contrasted with the “synergy” test proposed by petitioner and the “extraordinary level of innovation” test from the Solicitor General. Those approaches essentially mirror the pre-103 requirement of an “invention.” According to Judge Rich, “The first policy decision underlying Section 103 was to cut loose altogether from the century-old term ‘invention.’”

Intellectual Property Owners Association (IPO) in Support of Respondent:

The IPO is an organizatoin of intellectual property owners. MBHB (where I am of counsel) filed the brief on behalf of IPO. IPO’s brief supports the motivation requirement as an objective but flexible and practical approach to the obviousness problem.  IPO hits on the hindsight problem:

[The test must rely on] objective evidence, not mere unsupported opinion or argument. Otherwise, the inevitable use of hindsight will tend to render meritorious inventions "obvious" by using the inventor’s own teachings as a roadmap to piece together prior art references in ways that would not have been obvious at the time of the invention.

[The test must rely on] objective evidence, not mere unsupported opinion or argument. Otherwise, the inevitable use of hindsight will tend to render meritorious inventions "obvious" by using the inventor’s own teachings as a roadmap to piece together prior art references in ways that would not have been obvious at the time of the invention.

IPO also takes-issue with any “synergy” requirement. Synergy occurs when the "the interaction of elements that when combined produce a total effect that is greater than the sum of the individual elements." There are many patent-worthy inventions, however, that lack true synergy. In addition, the Solicitor General’s proposed "extraordinary level of innovation" requirement goes too far. “Nothing in the patent statute suggests that patents should only be awarded to Nobel laureates.”

Paul Berghoff, Jeremy Noe, and Aaron Barkoff (of OrangeBookBlog) are on the brief.

American Intellectual Property Law Association (AIPLA) in Support of Respondent:

AIPLA’s brief is a fun read — it starts off with quotes from Billy Wilder and King Solomon, both of which give us pause on the question of hindsight.

Harold Milton drafted the claims being asserted by Teleflex and has filed a very interesting brief in support of Teleflex.  Interesting because he begins with a statement that the suggestion test is illusory, or at least a misnomer. There is no requirement that there be any specific statement of suggestion in the prior art. Nonetheless, the test is important to maintain an “objective standard of patentability” and “consistent evaluation.”  It also prevents chaos:

Without an objective standard, chaos would be multiplied across thousands of patent examiners, judges, juries, attorneys, etc. and would result in inconsistent decisions on patentability.

Lee Thomason in Support of Respondent:

Thomason is a Kentucky-based patent attorney. One interesting aspect of his argument involves the law/equity distinction.  According to Thomason, challenges to validity are equitable in their origins as evidenced both by the recited equitable factors of 103(a) (“as a whole”) and by Blackstone’s recitation of the writ fo scire facias. As such, any changes to the rule should be to review obviousness decisions “according to the standard applied to equitable rulings.” Equitable review requires a full discussion of the record and results in more predictability.

[Please e-mail briefs in support of respondent to me at dcrouch@gmail.com]

Documents:

• On the Merits
• In Support of Petitioner
  • Petitioner's Brief on the Merits; [UPDATED WITH CORRECT VERSION]
  • Government's Brief in Support of Petitioner;
  • Law and History Professors (Sarnoff) in Support of Petitioner;
  • Law Professor (Strandburg) in Support of Petitioner;
  • Electronic Frontier Foundation in Support of Petitioner;
  • Judge Colianni in Support of Petitioner;
  • Intel and Micron in Support of Petitioner;
  • Progress and Freedom Foundation in Support of Petitioner;
  • Cisco and GM in Support of Reversal (Petitioner);
  • CCIA in Support of Petitioner;
  • Business Software Alliance in Support of Petitioner;
  • Time Warner, IAC, and VIACOM in Support of Petitioner;
  • AARP.
• In Support of Neither Party
  • IBM in Support of Neither Party;
  • Ford & DaimlerChrysler in Support of Neither Party;
  • DC Bar Assn (Eccelston);
  • Professor Hollaar.
• In Support of Respondent
• Respondent’s Brief on the Merits;
• Intellectual Property Owners in Support of Respondent;
• AIPLA in Support of Respondent;
• ABA in Support of Respondent;
• Automotive Suppliers in Support of Respondent;
• Big Innovative Companies (3M, et. al) in Support of Respondent;
• Technology Properties Limited in Support of Respondents;
• United Inventors Association in Support of Respondent;
• Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;
• Law Professors in Support of Respondent;
• Professor Tom Field (Franklin Pierce) in Support of Respondent;
• IPLAC in Support of Respondent;
• Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;
• Tessera, Qualcomm, and Amberwave in Support of Respondent;
• Science Professors in Support of Respondent;
• Lee Thomason in Support of Respondent.
• [Briefs also available at SCOTUS BLOG]
• Petitions Stage
  • Party Briefs
    • KSR’s Petition for Cert (Including the CAFC and District Court decisions in Appx. A & B);
    • Teleflex’s Brief in Opposition;
    • KSR Reply Brief (314 KB);
    • Teleflex Supplement.
  • Amicus Briefs
    • Government in support of petition;
    • 24 Law Professors in support of petition;
    • Progress Freedom Foundation in support of petition;
    • Microsoft, Cisco, Hallmark, et al. in support of petition.

Links:

• Discussion of Petitioner and Supporting Amici’s Briefs on the Merits;
• Discussion of Government's Brief in Support of Certiorari;
• Discussion of Microsoft’s Amicus Brief;
• Discussion of the CAFC decision;
• Discussion of Law Professors Brief;
• Discussion of In re Kahn;
• Discussion of Petition for Certiorari;
• Prediction Certiorari;
• Professor Wagner and Strandburg debate obviousness in Penn’s new online law reivew:PENNumbra;
• Prof Miller: KSR Lift-off!
• Prof Miller: Discussion of Gov’t Brief;
• Patent Hawk: Becoming Less Obvious;
• Patent Hawk: Hindsight Problem;
• Buchanan: "[O]nce again, patent reform has left the Capitol and walked across First Street to the Supreme Court." [Link];
• Petherbridge & Wagner Empirical Article [link]
• Cotropia Article: [link].
• Shane Popp Article on Section 103 background [link]
• The Patent at issue: [link]

Cite as Dennis Crouch, “KSR v. Teleflex: In Support of the Status Quo,” Patently-O, available at http://www.patentlyo.com.

Documents:

On the Merits

In Support of Petitioner

Petitioner's Brief on the Merits; [UPDATED WITH CORRECT VERSION]

Government's Brief in Support of Petitioner;

Law and History Professors (Sarnoff) in Support of Petitioner;

Law Professor (Strandburg) in Support of Petitioner;

Electronic Frontier Foundation in Support of Petitioner;

Judge Colianni in Support of Petitioner;

Intel and Micron in Support of Petitioner;

Progress and Freedom Foundation in Support of Petitioner;

Cisco and GM in Support of Reversal (Petitioner);

CCIA in Support of Petitioner;

Business Software Alliance in Support of Petitioner;

Time Warner, IAC, and VIACOM in Support of Petitioner;

AARP.

In Support of Neither Party

IBM in Support of Neither Party;

Ford & DaimlerChrysler in Support of Neither Party;

DC Bar Assn (Eccelston);

Professor Hollaar.

In Support of Respondent

Respondent’s Brief on the Merits;

Intellectual Property Owners in Support of Respondent;

AIPLA in Support of Respondent;

ABA in Support of Respondent;

Automotive Suppliers in Support of Respondent;

Big Innovative Companies (3M, et. al) in Support of Respondent;

Technology Properties Limited in Support of Respondents;

United Inventors Association in Support of Respondent;

Intellectual Ventures and other Small Companies with Large Patent Portfolios in Support of Respondent;

Law Professors in Support of Respondent;

Professor Tom Field (Franklin Pierce) in Support of Respondent;

IPLAC in Support of Respondent;

Harold Milton (attorney who drafted the claims in the Teleflex patent) in Support of Respondent;

Tessera, Qualcomm, and Amberwave in Support of Respondent;

Science Professors in Support of Respondent;

Lee Thomason in Support of Respondent.

[Briefs also available at SCOTUS BLOG]

Petitions Stage

Comments

[Michael Slonecker]

By a 13 to 3 margin it looks as if those forces aligned against the respondent believe that the sheer weight of their papers constitute "overwhelming" authority in favor of overturning what they unanimously call an inflexible TSM test. Most called the test too "rigid", while one called the test too "lax". Are these words synonyms? One brief even promoted the concept that public policy demands that patents issue on only important inventions. Perhaps the Supreme Court should articulate what is important and what is not so that prosecution, and the application of obviousness, is confined to only the really important stuff.

I cannot help but wonder if any of them who submitted briefs supporting the Petitioner have actually read obviousness decisions rendered over the years by the CAFC and the CCPA. Until I read their briefs on the merits I never realized that the only "test" for obviousness was TSM as they so narrowly describe it. Looks as if I need some more CLE, and especially CLE taught by those who have never practiced before the PTO and the CAFC.

By the way, what is Hallmark doing in this case? Have they suddenly discovered "trolls" for greeting cards?

One question off the subject. If the Supreme Court is the final arbiter of what the law IS, then why are district and appellate court decisions denominated "decisions", while decisions of the Supreme Court are denominated "Opinions"? Shouldn't the words be reversed?

[Michael Sloneckier]

Sakraida Patent No. 3,223,070

Claim 1. A dairy barn for cows and the like including a smooth, evenly contoured paved surface forming a floor providing a walking surface for cows in the barn, drain means for draining wash water from such floor opening to the top of the floor, said smooth, evenly contoured surface which forms such floor sloping toward said drain means whereby wash water discharged on the floor may be collected and disposed of through said drain means, said barn further including multiple rest areas with individual stalls for each cow and with each of said stalls having a bottom which is also of smooth pavement, but which is disposed at an elevation above the paved surface forming the floor, said stalls being dimensioned so that a cow can comfortably stand or lie in the stall, but offal from the cow falls outside the stall bottom and onto the floor providing the walking surface in the barn, said barn further including defined feeding areas having feeding troughs with means for discharging feed to the troughs, a cow-holding area, a milking area and a transfer area all bottomed with the walking surface forming said floor in the barn; and floor-washing means for washing the floor providing the walking surface in the barn where said floor bottoms said feeding, holding, milking and transfer areas operable to send wash water flowing over the floor with such water washing any cow offal thereon into said drain means, said floor-washing means including means located over a region of said floor which is uphill from said drain means constructed to collect water as a pool above said floor and operable after such collection of water as a pool to disperse the water as a sheet of water over said floor.

I have always found it useful to look at a case starting with the district court, proceedings, then through the appellate court (in this case the 5th Circuit, one of the panel members who unaminously upheld nonobviousness being Judge Wisdom), and then moving on to the Supreme Court where Justice Brennan issued a short and sweet unanimous opinion largely based on what the Supreme Court, after looking at the claim, decided was merely the combination of old elements neededing something special to be nonobvious...an unexpected, synergistic result. My guess it that none of them ever worked in a dairy farm.

Sakraida, the most recent (1976) obviousness opinion has always troubled me, especially because the Supreme Court reviewed the claim at issue presented above, and then decided on its own that the claimed invention was unworthy of protection under the patent laws. Once it decreed that nonobviousness was a question of law, and ignoring the finding of facts developed at trial, it then proceeded to assume what I can only charaterize as the role of the USPTO.

This is a case cited repeatedly by Petitioner and its supporters, and yet not one mention is made in their collective briefs about the role assumed by the Supreme Court's clearly second guessing the USPTO. It bears mentioning that the district court judge very clearly did not like an invention dealing with BS, and repeatedly held against the patentee.

What worries me about Sakraida as precedent is that clearly it is not what many of KSR's supporters would consider an important invention, one of the "buzzwords" that have recently started to emmanate from the mouths of those intent on undermining Title 35 piecemeal.

My fervent hope is that the basic rules articulated in Graham are not modified to try and rationalize their opinions in Anderson's Black Rock and Sakraida as a "green light" to engage in what was clearly fact finding on its part. The "quality" of an invention should have no bearing on whether or not it meets the three tests specified in Title 35.

Academicians and amici having a vested interest in reversing KSR, in effect crafting a standard that has as an underlying and unstated premise that only "good" stuff qualifies for protection under Title 35 in the interest of promoting the useful arts, should not, in my view, assume the role that they know what is and what is not good as a matter of public policy.

The CAFC, and particularly in recent decisions since cert was granted in KSR, has presented cogent arguments that TSM, as narrowly defined by those supporting the Petitioner, is not the sole "test", but merely one means by which to avoid the use of hindsight. I hope that the CAFC's recent pronouncements are taken into account by the Supreme Court in the event the Justices are inclined to declare TSM an unacceptable practice.

Just as an aside, can anyone conceive of a person/company so dumb that it could not craft a work around to Claim 1 above? The only one's I can think of are those who when their IQ is squared the number becomes smaller.

[Alan McDOnald]

Gee, the attorney who was paid to write the patent application files a brief supporting upholding it and we are supposed to be surprised?

What did we think he would do? File a brief saying, look, this guy came to me, I took his money and I knew he didn't have anything of value, but I also knew that if I fought hard enough against the examiner I could get a claim through the PTO whether it was any good or not?

[mmmbeer]

As much as I'd like to say, "we need only an objective test," I think that that is not particularly practical and really swings the obviousness discussion to far from center--in the same way that the "extraordinary level of innovation" pushes the test too far in the other direction.

As for the objection that having a less objective standard will create more "consistent results" and prevent chaos seems less than *obvious*. It seems unlikely that if we moved away from a less rigid objective standard the the USPTO would give the examiners free reign with no instructions. Indeed, it's probably more plausible that the results from the USPTO would actually be more rationale as it would provide an opportunity to formulate proper obviousness tests for the various arts rather than a one size fits all TSM. As has been mentioned in comments before on this site, certain arts lend themselves better to finding prior art than others.

Of course, what the world would look like without the TSM test is really nothing more than guessing.

[pds]

"Perhaps the Supreme Court should articulate what is important and what is not so that prosecution, and the application of obviousness, is confined to only the really important stuff."

When I first read these comments, I didn't know whether or not you were being sarcastic. After reading the remainder of your post, I realize that you were. If anybody can reliably tell me how I can determine that an invention is "important" was prior to drafting of the patent application, prior to patent prosecution, or even immediately after the patent has issued, please let me know your secret.

"I cannot help but wonder if any of them who submitted briefs supporting the Petitioner have actually read obviousness decisions rendered over the years by the CAFC and the CCPA. Until I read their briefs on the merits I never realized that the only "test" for obviousness was TSM as they so narrowly describe it. Looks as if I need some more CLE, and especially CLE taught by those who have never practiced before the PTO and the CAFC."

Not only could I have not not put it better, I could not have put it funnier. I would wager that many of the writers who submitted briefs in support of the Petitioner never reviewed any of common obviousness (103) rejections currently coming out of the Patent Office. If they had, they would realize that a serious disconnect exists between how they are characterizing the TSM standard in their briefs and how the Patent Office is applying the TSM standard.

"Academicians and amici having a vested interest in reversing KSR, in effect crafting a standard that has as an underlying and unstated premise that only "good" stuff qualifies for protection under Title 35 in the interest of promoting the useful arts, should not, in my view, assume the role that they know what is and what is not good as a matter of public policy."

I have written this before, so excuse me for repeating myself, but IMHO, many of the writers of the briefs supporting the Petitioner are not writing these briefs because they believe that the Federal Circuit has interpreted Supreme Court precedence incorrectly. Instead, it is my opinion that these writers are hostile to patents and intellectual property in general, and just see KSR as a vehicle for vehicle the intellectual property system of this country.

To more specifically address your point, as noted in the Lee Thomason brief in support of Respondent, many of the proposals suggested by the briefs in support of Petitioner should be directed to Congress, not the Supreme Court. It is not up to the Supreme Court to determine what patents are "important" or not.

[pds]

"As for the objection that having a less objective standard will create more "consistent results" and prevent chaos seems less than *obvious*. It seems unlikely that if we moved away from a less rigid objective standard the the USPTO would give the examiners free reign with no instructions. Indeed, it's probably more plausible that the results from the USPTO would actually be more rationale as it would provide an opportunity to formulate proper obviousness tests for the various arts rather than a one size fits all TSM. As has been mentioned in comments before on this site, certain arts lend themselves better to finding prior art than others."

Any test that relies upon a subjective standard would allow any patent application to EASILY be rejected (or allow any allowed patent to be subject to reexamination/litigation to EASILY to be invalidated). It doesn't take one having ordinary skill in the art to reverse engineer an invention once a patent application has been filed. I have no doubt that the average patent attorney or the average patent examiner would have no trouble formulating a convincing rationale as to how and why particular references could be combined so as to arrive at the claimed invention.

The problem with a subject test is that it eliminates impermissible hindsight reconstruction as a responsive argument by applicant/patentee to an obviousness rejection. Under an objective standard (i.e., TSM), if the obviousness rationale is the same as applicants, proof is needed of the rationale. However, under a subjective standard, a patent examiner could assert that the rationale for the obviousness rejection is the same as that described by applicant, but the rationale is the subject belief of the examiner, which does not require proof.

As I have written before, a subjective standard is the loophole that essentially eliminates impermissible hindsight reconstruction as a viable argument.

"Of course, what the world would look like without the TSM test is really nothing more than guessing."
I couldn't agree any more on that one.

[John]

Interesting that Milton's recollection of past patents that would have been deemed obvious without TSM, should be issued under the secondary considerations test of "unexpected result" according to him.

CAFC's backpedaling to ease up the TSM test will not resolve the problem. I am not convinced implicit motivation will provide more predictability to the patent system. Implicit motivation does not get rid of hindsight - it only makes the examiners work a bit harder in crafting up some debatable rationale. The trolls will attack this weak hole and then we will be back where we are.

SCOTUS should resolve this issue once and for all by getting rid of TSM and iterate that secondary considerations should be the ultimate determinant of nonobviousness.

[SF]

In commenting about the members of the Supreme Court who decided the Sakraida case (in which the claimed dairy barn was held obvious), Michael Sloneckier guessed that "none of them ever worked in a dairy farm."

Probably true, but they surely had seen a lot of bull**** in their lives.

[mmmbeer]

Ok, I swear that the IPO brief reads like a yoga manual.

And they repeatedly say that the TSM test is consistent with the SCOTUS' test. Is that really a good argument? I mean, if I were on the SCOTUS--ha--I would read that as an admission that one of these tests is redundant, and I'm going to wager that ours should win.

Now, if I were on the SCOTUS, I probably would not have posted twice in this thread either.

[Scot]

If these are the strongest briefs that can be offered by those in support of respondents, SCOTUS should have an easy time ruling in favor of petitioners.

Good riddance to the trolls and their henchmen attorneys.

[Paul Cole]

The immediately preceding contribution says it all!

[Paul Cole]

For the avoidance of doubt, when my contribution was posted, the last contribution was in Chinese. However Scot posted his contribution before mine was received.

[Fredric Goldstein]

The first comment in this series, posted by Michael Slonecker:

"By the way, what is Hallmark doing in this case? Have they suddenly discovered "trolls" for greeting cards?"

Michael, check out the two Fed Cir decisions in June 2001 and May 2005 in Group One Ltd v Hallmark Cards, Inc. This nine year litigation which found Hallmark on the losing end in these decisions is reason enough for them to try to explain it away in their amicus briefs. Good luck to them but it's a bit late in that game. Unless it's a preemptive strike against another Group One somewhere out there who will have a similar beef.

Scot, you have no clue what a "henchman attorney" is until you see a table full trying to argue away their clients cupability with the "dog ate my homework" excuses, no, make that my alien dog....
By the way, you're kidding yourself if you think patent ligitation is going to dry up if some obviousness modification is put into law, because a "troll" is not defined (in this blog site anyway) as one having an obvious patent but one who somehow misuses his patent rights by, uh, actually enforcing them.

[anon]

The posts here confirm what I have suspected for a long time: patent prosecutors have been spoilt by the Federal Circuit.

It seems to me that the biggest fear of all the patent prosecutors here is that they will no longer be able to challenge the examiner on a fact determination. (Yes I know it is a question of law, but it is based on so many factual determinations.) Guess what, guys, pretty much every other government handout has these characteristics: (1) the applicant bears the burden of proof; and (2) if you lose in the first instance, it is all but impossible to get a reversal on appeal.

The difference between the Supreme Court and the Federal Circuit is that the Supreme Court probably doesn't think that patents are the exception in American law where anybody who wants a government handout can demand it and make the government show that they don't deserve it.

[Michael Slonecker]

"Unless it's a preemptive strike against another Group One somewhere out there who will have a similar beef."

I guess I figured wrong that they would not throw good money after bad. They are a day late and now many $$$ short.

[Michael Slonecker]

anon:

I can't put my thumb on it, but something tells me you are not gung-ho when it comes to patents.

[pds]

"The difference between the Supreme Court and the Federal Circuit is that the Supreme Court probably doesn't think that patents are the exception in American law where anybody who wants a government handout can demand it and make the government show that they don't deserve it."

Anon, after dozens of posts, your true colors finally show through. Like many patent examiners, you are both hostile to patents, patent attorneys, and inventors, while at the same time failing to realize that all three not only keep provide you a job, but also contribute to pay your salary.

By the way, patents are not "a government handout." A quid pro quo exists … inventors disclose their inventions, and as a result, they have receive a limited right to their inventions. Also, Applicants have probably spent a lot of their own time and money to have a patent application prepared to explain to the government why "they deserve it." This is the burden placed on applicants by 35 U.S.C. §§ 101, 112.

"It seems to me that the biggest fear of all the patent prosecutors here is that they will no longer be able to challenge the examiner on a fact determination."
The biggest fear of patent prosecutors is to have examiners being given the power to make up facts and rationales for combining references.

I probably wouldn't mind if the patent office had a professional core of examiners. For most patent attorneys or judges that decide patent cases, their current profession is very likely to be the profession from which they retire. As a result, although I'm sure there are some bad ones out there, most take their jobs very seriously. On the contrary, the USPTO is a revolving door of examiner's coming in, getting a couple of years experience, and then moving on.

During last year's AIPLA meeting, I heard a statistic that something like 40-50% of the examiner's in the 2100 group have less than 1 year of experience. I cringe to think that an examiner with just 6 months of experience could make an obviousness decision that could prevent my client from receiving a patent. However, if you are filing an application that goes to the 2100 group, for example, that is a likely result.

"Guess what, guys, pretty much every other government handout has these characteristics: (1) the applicant bears the burden of proof; and (2) if you lose in the first instance, it is all but impossible to get a reversal on appeal."
If that is what you believe with regard to appeals, then you really don't understand the way of the government. There is a concept called "due process" that comes into play when someone is dealing with the government. You should investigate it a little further.

[pds]

As a general comment with regard to obviousness determinations, I think the point the throws off most examiners, almost all commentators, and even a great many patent attorneys/agents, is how an obviousness determination should be made. It is to be made through the eyes of one having ordinary skill in the art at the time of the invention.

If I have a client that comes in and tells me that he/she has a great idea and wants me to prepare a patent application, I will instinctively ask myself if I think that invention is obvious based upon my knowledge of the art. While I instinctively ask myself this question, I am also cognizant that my opinion DOES NOT MEAN ANYTHING. I am not one having ordinary skill in the art. As such, any preconceived notion that I have as to the obviousness of a particular invention is FLAWED.

The common error I see most examiners and almost all commentators make is that they see an invention and think to themselves, "this must be obvious." The examiner then goes out and tries find prior art that supports the examiner's belief that the invention is obvious. I would guess that 90-95% of obviousness rejections start out like this.

The examiner, however, is NOT one having ordinary skill in the art. One having ordinary skill in the art hasn't looked at hundreds (if not thousands) of issued patents and seen all the different ways old elements could be combined to form new inventions and the reasons one the invention is useful. One having ordinary skill in the art may not even have the skill level that the examiner has. Moreover, one having ordinary skill in the art hasn't just read an application that describes how to make and use the claimed invention. The examiner also has the opportunity to see teachings in the real world that may postdate applicant's invention. For all these reasons, an examiner makes a very poor representative of one having ordinary skill in the art at the time of the invention.

The role of an examiner should be to suspend his or her preconceived notions of whether or not the invention is obvious and to focus on trying to find prior art, either alone or in combination, that teaches, suggests, or motivates the claimed invention. Once an examiner writes "for these reasons, examiner believes the claimed invention is obvious ," I know that examiner has used the wrong approach. Instead, the examiner's approach should be, "one having ordinary skill in the art," based upon these teachings, would find the claimed invention obvious.

I understand it is much harder for an examiner to prove what the fictional one having ordinary skill in the art at the time of the invention would find obvious. I recognize that it would be much easier for an examiner to make that determination if the examiner could rely on what he/she believes would have been obvious. That issue, however, should be taken up with Congress, not the Supreme Court.

Congress inserted the words "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains" after the phrase " A patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious." If the USPTO wants to have their examiners be able to make an obviousness decision based upon their own subjective beliefs, then they should lobby Congress to have the words "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains" replaced with these words "to an examiner at the patent office at the time of examination within the patent office."

[Scot]

Frederic wrote:

"By the way, you're kidding yourself if you think patent ligitation is going to dry up if some obviousness modification is put into law, because a "troll" is not defined (in this blog site anyway) as one having an obvious patent but one who somehow misuses his patent rights by, uh, actually enforcing them. "

Like you said, trolls misuse patent rights by enforcing OBVIOUS patents that should never have been issued. Therefore, I am not the one kidding himself who thinks that getting rid of obvious patents would have no effect on these trolls and their attorney henchmen.

[Gary]

Dennis:

You have created a great site that people can discuss issues most of them are important and interesting.

But, I hate the idea that people use your site to do advertisements such as the one by a Hong Kong firm posted on 10/13 and the one posted by Online Casino on 10/14.

[John]

pds wrote:

"Like many patent examiners, you are both hostile to patents, patent attorneys, and inventors, while at the same time failing to realize that all three not only keep provide you a job, but also contribute to pay your salary."

This is a real sad accusation without any merits. Many attorneys who got their starts at the PTO would tell you that the count system examiners work under is set up to encourage the ALLOWANCE of patents. You can explore the validity of that claim on your own or at the Partnering in Patents coming up soon. Therefore, examiners would be more inclined to keep the status quo so that their ALLOWANCES can continue to be validated under the stringent TSM test. Without this test, if the PTO quality group found a prior art with a missing element that the examiner missed, the examiner could easily be cited for an error; whereas currently, the examiner can refute that finding by hiding under the TSM cover. Truthfully, I think a lot of examiners would love nothing more than to issue a valid patent and get their counts. But a lot of attorneys choose not to focus on the essence of the invention and instead concentrate on trivial matters that just prolongs prosecution (and perhaps bulk up their billable hours). Remember, examiners look through thousands of patents in one art area while attorneys usually have to deal with patents from many different areas. Who do you think is the better judge of patentable subject matter for a particular art?

[Dennis]

Thanks Gary, Those comments have been deleted. It is a problem of spam. The only sure-fire way to ensure block the spam is to block all comments.

[Joe Smith]

Congress has the power "To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries" and that is all.

"Obviousness" should be interpreted in a manner consistent with the limited Constitutional mandate for the patent sytsem. If a definition of obviousness is used which systematically permits patenting of inventions which needed no encouragement because they would have happened inevitably within a short time then the statute is, IMHO, outside of its authorized scope. A patent statute which systematically errs in favor of patent validity is unconstitutional.

To Gary who commented on the spam links - that is probably put there precisely because this is a good site and a link back from here will increase that site's search engine ranking.

[John]

pds wrote:

"By the way, patents are not "a government handout." A quid pro quo exists … inventors disclose their inventions, and as a result, they have receive a limited right to their inventions. Also, Applicants have probably spent a lot of their own time and money to have a patent application prepared to explain to the government why "they deserve it." This is the burden placed on applicants by 35 U.S.C. §§ 101, 112."

I agree "handout" is not the best term. However, the government should issue only DESERVING "inventions", regardless of how much time and money they spent or whether they think they deserve it or not.

"The biggest fear of patent prosecutors is to have examiners being given the power to make up facts and rationales for combining references."

True, but the recent CAFC cases appear to say that examiners are entitled to do this right now under implicitness.

"During last year's AIPLA meeting, I heard a statistic that something like 40-50% of the examiner's in the 2100 group have less than 1 year of experience. I cringe to think that an examiner with just 6 months of experience could make an obviousness decision that could prevent my client from receiving a patent. However, if you are filing an application that goes to the 2100 group, for example, that is a likely result."

Firstly, 2100 experienced a jump in hiring because of vast increases in the filing during the dot com era and the subsequent defensive filings due to the troll menace that has created a huge backlog. Congress has finally recognized the problem recently and allowed the PTO to keep their money so they can hire these people. Secondly, I am not sure what your point is in regards to the correlation between the new hires and determination of obviousness. Examiners are relied upon mainly to search for prior art. 2100 has many of the new technologies. Hiring new grads with knowledge of these new technologies would help in search of these prior arts. Surely, you're not suggesting the PTO should have some dinosaurs who went to school during the punch card era trying to search for prior art involving fibre channel arbitrated loop interface? Is that your definition of one with ordinary skill in the art?

[pds]

"This is a real sad accusation without any merits. Many attorneys who got their starts at the PTO would tell you that the count system examiners work under is set up to encourage the ALLOWANCE of patents."

I know a former patent examiner (who was also a SPE and at the PTO for a long time) that will only write applications but refuses to prosecute applications because he gets very frustrated with the attitude of current patent examining corp.

Notwithstanding that the likely truth that the count system encourages allowances, what I have seen out of the patent office doesn't reflect that fact. I could be wrong, but what I see are many examiner being afraid to allow an application for fear that they'll have it reviewed by quality control and have it kicked back. I've been told that an examiner would rather reject an application and have it overturn by the board than to get have the application get kicked back as a result of the post-allowance review. The belief is that if the board overturns the rejection, the examiner will be less likely to get dinged by quality control

As a result, I've received actions that are so outlandish that I laugh sometimes when I read them. My most recent favorite is an application that got kicked back to the examiner after a successful (for the client) request for a pre-appeal brief conference. The examiner applied a new secondary reference and the entire asserted motivation to combine was word-for-word quote of the abstract in the secondary reference, which was did not discuss the asserted modification in the slightest.

This is conjecture on my part (based upon a some evidence, but certainly not solid), but what I think is happening in many instances is that an examiner is instructed by a primary or SPE to reject a particular application (after quickly reviewing the claims) based upon a particular reference or combination of references. The examiner, for whatever reason, doesn't understand the instructions or after reviewing the prior art realizes that the prior art is good but he/she just makes something up because that is what he/she was told to do.

"But a lot of attorneys choose not to focus on the essence of the invention and instead concentrate on trivial matters that just prolongs prosecution (and perhaps bulk up their billable hours)."

Perhaps you should read MPEP 2141.02, which cites W.L. Gore & Associates, Inc. v. Garlock, Inc., as stating that "[d]istilling an invention down to the 'gist' or 'thrust' of an invention disregards the requirement of analyzing the subject matter 'as a whole.'" I'm not sure what you mean by "trivial matters," but if the patent attorney drafting the claims was any good, then every single word on the claim should be important, since if the word(s) isn't important, it shouldn't be in the claim. As a result, for example, if you think that a patent attorney quibbling over the meaning of a single word in the claim is wasting time on a trivial matter, you should realize that there is probably a good reason why this is being done.

Most patent attorneys I know don't need to "bulk up their billable hours." From what I have been told by those that have been in this business a lot longer than I is that there is always a need for more attorneys/agents capable of doing patent prosecution. As a result, we are rarely short for work. Besides, getting allowances makes the clients happy, which leads to more work. However, getting rejections on the same (bad) art, three consecutive times, when even the inventors recognize that the art is bad, makes for very frustrated clients, and frustrated clients stop (or reduce) filing patent applications and sometimes don't pay their bills.

"Without this test, if the PTO quality group found a prior art with a missing element that the examiner missed, the examiner could easily be cited for an error; whereas currently, the examiner can refute that finding by hiding under the TSM cover."
The problem is that almost all inventions are combinations of old elements. As a result, the PTO quality group should almost always be able to find some combination of the prior art that includes all of the claimed limitations.

"Remember, examiners look through thousands of patents in one art area while attorneys usually have to deal with patents from many different areas. Who do you think is the better judge of patentable subject matter for a particular art?"
You've just proved my point as to how the USPTO operates. An examiner with all that experience is the VERY WORSE person to make an obviousness determination based upon his/her opinion. A patent examiner, particular one with lots of experience, is nowhere near "one having ordinary skill in the art" because of all the experience the examiner has. The more experience the examiner has in a art makes it more likely that they examiner is NOT indicative of one having ordinary skill in the art.

Moreover, your comment also fails to recognize that application of an obviousness determination requires a considerable understanding of the underlying LAW. I have no doubt that an examiner is more than likely to have a must better understanding of the technology. However, understanding the technology will only get an examiner so far.

The MPEP includes discussions of probably several hundred cases that involve patent prosecution. However, these little snippets in the MPEP are usually not more than a paragraph (and sometimes only a sentence long), and most times these snippets provide little guidance as to why a particular decision was made by the courts. Any good patent attorney, upon seeing a case cited by an examiner, should pull the case and read it because it has been my experience that in 90% of the times the underlying facts of the cited case are so different from the present situation so as to render the cited case law irrelevant or the examiner has cited a case the stands for the exact opposite of what the examiner believes the case to stand for. I wish I could share all the funny anecdotes I have on the last one.

Although I'm sure there are examiners that read case law, and probably some of the examiner who post (read) on this board because the very fact that they are looking to outside sources for information about patent law shows that they are dedicated to learning about their current profession. However, I would wager less than 10% of the examiners have actually read the case that they cited in a rejection, and that number may be way to high. What is even sadder is that I have heard (from examiners) that many examiners don't even read the MPEP. Instead, he/she just rejects claims based upon what the primary or supervisor tells them.

[pds]

"I agree "handout" is not the best term. However, the government should issue only DESERVING "inventions", regardless of how much time and money they spent or whether they think they deserve it or not."

If you can explain to me the different between a "DESERVING" invention and a non-deserving invention, I would be greatly appreciative. I would also be appreciative if you could direct me to the statutory authority for making that determination. From where I stand, once an applicant has met the requirements of 35 U.S.C. §§ 101, 112, the applicant deserves a patent application. It is only IF the patent office sets for a proper rejection under 35 U.S.C. § 102 or 35 U.S.C. § 103 should the application be denied.

"True, but the recent CAFC cases appear to say that examiners are entitled to do this right now under implicitness."
Examiners already do this and have been doing this for a very, very long time. What I think most examiner's (and many attorneys) don't get (based upon my reviews of prosecution histories) is that there is a difference between putting together a reasonable TSM argument and establishing the factual support for the argument.

I cannot count how many times I have said to myself, after reading a TSM argument, "sure, your argument sounds reasonable, however, your argument assumes so many facts that you haven't established … your argument assumes that X, Y, and Z were known at the time of the invention, but your statement of the rejection not only fails to include factual support for these assumptions, your argument also fails to recognize that these assumptions were a necessary part of your argument." One of my favorite cases is In re Lee, which is discussed (in one sentence) in MPEP 2143.01(I). It is a great read for any patent attorney.

"Secondly, I am not sure what your point is in regards to the correlation between the new hires and determination of obviousness."
A proper obviousness determination is much harder to make (and to argue against) for someone with not a lot of experience. There are so many nuances to the law surrounding obviousness that I expect even a talented, yet new patent attorney would take several years to have a good grasp of the law, and that assumes he or she has been given proper guidance. To expect a patent examiner with just 6-12 months experience to consistently come up with good obviousness rejections is asking a lot.

"Surely, you're not suggesting the PTO should have some dinosaurs who went to school during the punch card era trying to search for prior art involving fibre channel arbitrated loop interface? Is that your definition of one with ordinary skill in the art?"
Again, another poster proves my point is that most examiners do not suspend their belief as to whether or not the claimed invention is obvious in their eyes. Instead, the common practice is to determine whether or not the claimed invention is obvious based upon the examiner's experience and then find art that supports that obviousness determination.

To answer your question, the patent office should use the examiner with experience in the field to determine the teachings of the prior art, and then bring in experienced examiners, who really understand the nuances of an obviousness rejection, to help the initial examiner put together a 103 rejection if the prior art justifies that type of rejection.

I've written this before, and I'll write it again. I am all for preventing Congress for diverting funds from the USPTO so that (i) additional hiring can be made; (ii) examiners can be paid more; (iii) examiners be given more time to examine applications; and (iv) examiners be given more extensive training.

I have never had a problem with an examiner giving my client a good examination while citing good art. It is a treat the few times I come across those examiners. It takes me very little time to understand the basis for the examiner's rejection, and after reading the rejection, not only do I know how to amend to claims to overcome the cited prior art, I also know that once I do overcome the cited art, the application will probably be allowed because the examiner cited the best art out there. With these examiners, prosecution is usually are wrapped up after the first or second office action.

What I really don't like is bad rejections based upon bad art, which were written with as little effort as possible. With these, it takes me several times longer to even figure out the examiner's rejection, and even then, I'm guessing on a lot of it.

One last thing, the following paragraph is the second paragraph in MPEP 2142. I could have saved myself a lot of time writing these posts if I had just reproduced it at the outset.

To reach a proper determination under 35 U.S.C. 103, the examiner must step backward in time and into the shoes worn by the hypothetical "person of ordinary skill in the art" when the invention was unknown and just before it was made. In view of all factual information, the examiner must then make a determination whether the claimed invention "as a whole" would have been obvious at that time to that person. Knowledge of applicant's disclosure must be put aside in reaching this determination, yet kept in mind in order to determine the "differences," conduct the search and evaluate the "subject matter as a whole" of the invention. The tendency to resort to "hindsight" based upon applicant"s disclosure is often difficult to avoid due to the very nature of the examination process. However, impermissible hindsight must be avoided and the legal conclusion must be reached on the basis of the facts gleaned from the prior art.

[Fredric Goldstein]

Scot, get a grip. You wrote:
"Like you said, trolls misuse patent rights by enforcing OBVIOUS patents that should never have been issued. Therefore, I am not the one kidding himself who thinks that getting rid of obvious patents would have no effect on these trolls and their attorney henchmen."

Like I said? I never any such thing. The "issue" of trolls and obviousness are not identical, as you seem to think.
And I never said the utter absence of obvious patents, as if there never ever was one during the reign of Sakraida, would result in no reduction of litigation. Litigation often occurs when two parties have a difference of opinion as to infringement and validity. Move to a more subjective test, as the KSR side wants, and you get more litigation, not less, even if (and I say if while not agreeing) there are less obvious patents.
Patent litigation is not restricted to only obviousness issues, even if infringers reach this as an affirmative defense nearly 100% of the time. Patent infringement will simply occur regardless and that will result in litigation.

I cannot understand the viewpoint that if only only we go back to the Sakraida standard, which to many is simply dicta out of control, the problem of obvious patents would be solved. Anyone who has had to face some 80 year old patent prior art rejection knows the feeling of "how the heck did THIS patent ever get issued?" There are as many dogs pre-CAFC back then as now.

I also cannot however understand this viewpoint that whenever the PTO errs, it is always to issue obvious patents, never of course to deny worthy patents. Most inventors can barely, if at all, afford a patent with one office action, much less multiple office actions (often with the same untenable rejection) and/or an appeal. Therefore, inventions which should be granted patents sometimes never get one. Where is the finger pointing there?

If the point of the patent system is the quid pro quo of disclosure for a patent monopoly, and that quid pro quid is scuttled in the attempted patenting of some inventions by some more subjective standard, then society suffers more than big business because the system itself suffers and that is more important than the economics of big corporations who often seem to get caught flat footed in the ideas department, then moan when they don't have a free hand in making, using or selling what they came up with a bit later than someone else.

[Joe Smith]

"If the point of the patent system is the quid pro quo of disclosure for a patent monopoly .."

That certainly seems to be one of the arguments but if that tradeoff were working then we would have people scouring the patent files for solutions to problems and inspirations for products. It does not appear that either is happening. If it is not happening, then the disclosure argument is not a valid ground for having a patent system.

[AB]

In its Amicus brief, IBM proposes a modified test for obviousness that is clear and workable and strikes a balance between the various approaches suggested: [paraphrasing] retain the basic TSM test, but apply a rebuttable *presumption* that a skilled artisan would combine elements found in analogous prior art references. By encouraging the patent applicant to define the scope of the invention more precisely in the application process to narrow the body of art, the scope of the patent will be better defined.

Under existing practice, a reference must be analogous prior art. However, analogous prior art includes not only art in the field of the applicant's endeavor, but also art reasonably pertinent to the particular problem with which the inventor was concerned. While this is the best solution I have come across, I wonder if the latter category of analogous prior art remains unaddressed by the proposed test? In other words, even if applicant carefully (and narrowly) defines the field of the invention, wouldn't an examiner's determination of art outside the field but relevant to the applicant's particular problem remain a wild card in obviousness determinations that would not be addressed by the proposed test?

[MaxDrei]

Joe Smith writes that "it does not appear" that people look at A publications. Well, ROW industry sure looks at them. It uses them not only as a source of technical information, but also as an instant guide to how much innovative "design around" will be needed, right now, to ease clear of the competition's emerging patent rights.

Uniquely, however, US law on willful infringement (correct me here if I am wrong)makes it DANGEROUS to look systematically at emerging A publications. Is this not an impediment to innovation, that is suffered disproportionately by US companies.

Could a new common law Statute be crafted, that dissolves this impediment? It could.

[MaxDrei]

AB writes above about the IBM suggestion, and about basing the obviousness analysis on "the particular problem with which the inventor was concerned". So, that would be the subjective problem, would it? The problem which the inventor is proud to have solved, but for which (unknown to inventor) the claimed solution was already rendered obvious by the published art. Am I right that it would NOT be the "objective problem" that distinguishes the inventor's residual, objectively inventive, contribution (that is identified and enabled in his/her patent application) from the totality of the art? By that I mean the objective problem that is the foundation of the "Problem and Solution" approach to obviousness that the EPO has been running, these past 25+ years. The point about the approach is that it is just as handy a tool for the Opponent's advocate as for the Inventor's advocate. An advantage to one of these, or the other, it does not give. Shame the rest of the world doesn't take the trouble to understand it.

[Duke]

Perhaps someone attending the Partnering in Patents coming up can question the PTO about the criteria being used by the second pair of eyes in determining allowance. Supposedly, these second pair of eyes comprise a group of senior examiners who understands patentability. The revelation of the criteria they use would help attorneys greatly in drafting/amending claims. I surely hope they are not using the "pornographic test" -- they will know it when they see it.

[Disappointed]

AIPLA's brief is a fun read, but could not be taken seriously. Can anyone seriously say a computer claim can be rejected by an abacus reference? Only if it's too broad, in which case it should be rejected. The brief is a bad representation of the patent system and reflects badly on AIPLA's professionalism.

[Steve]

Disappointed,

I agree with you whole-heartedly about the AIPLA. They have not even sought an investigation about the ex parte communications between RTP and the PTO when I know full well they are aware of them.

I thought about resigning since they do not really seem to do anything useful.

[Anthony Diepenbrock]

There is a difference between synergy and simply requiring a new or different function or operation than that performed or produced by the elements separately.

[Malcolm Mooney]

Anybody who uses the "t" word in a discussion about the law of obviousness should see a shrink.

Issued patents exist. People who own them will try to enforce them. Get over it.

[Malcolm Mooney]

Dennis asks

"In this scenario (exploding archives of written information), why would we need to allow the evidentiary nightmare of giving weight to previously unstated suggestions to find an invention obvious?"

The "evidentiary nightmare" is a bogeyman. The solution to fixing the shortcomings of a strict TSM test is simply to allow reasonable Examiners to present reasonable arguments to support their conclusion that a combination of elements is obvious without having to show that "Jones suggested this exact combination in blah blah blah."

I've prosecuted and I've litigated patents long enough to know that the range in quality varies widely. It is simply a laugh to come here and read comments from ostensibly "pro-patent" types who expect me to shed tears for the poor client who, but for some "arbitrary" decision at the PTO, would be saving the world and making everybody rich in the process. Really, now. How naive does one have to be to fall for this stuff?

Prosecuting patent applications is a game of throwing wet toilet paper up against the restroom wall to see how much of it you can get to stick. For every "invention" (i.e., an invention meeting the statutory requirements) dreamed of in a typical application, there are a hundred fumbling-in-the-dark dead-on-arrival worthless "teachings" that will be resuscitated and thrown at the Examiner should the inventors "desired" claim get tanked.

Which ones are more likely to survive? Suprise: under the strict TSM test, the ones that aren't explicitly disclosed in the prior art because, as a matter of strict definition, they aren't "obvious" (or can't be proved as such by the Examiner).

Let's put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?

Or should a reasonable Examiner be able to say, "Nothing has been achieved here that wouldn't be obvious to someone trying to combine those three devices"?

[pds]

"The solution to fixing the shortcomings of a strict TSM test is simply to allow reasonable Examiners to present reasonable arguments to support their conclusion that a combination of elements is obvious without having to show that 'Jones suggested this exact combination in blah blah blah.'"

Who gets to decide what examiners are reasonable? Who gets to decide what arguments are reasonable? Also, on what basis should the reasonableness of the examiner and the examiner's arguments be reviewed?

How do we know if the examiner's "reasonable" argument wasn't based upon prejudice against the inventor/attorney? How do we know that the stated motivation to combine wasn't a result of the examiner reading applicant's disclosure, in which applicant described the problem to be solved and how applicant went about in solving the problem, and the examiner determined that the examiner himself/herself would have done exactly the same?

"Let's put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?"
Good question, but my answer is probably what you don't expect. If nobody has suggested that particular combination, then I don't have a problem having a patent issue for that combination. If the combination is valueless, then why does anybody care? I see absolutely no harm (to anybody), except to the inventor's check book, for having that type of patent issue.

However, if this combination does have economic value and the combination was not suggested, then a patent should also be issued on the combination. I have a problem tightening up the requirements for having a patent granted just to prevent valueless patents from issuing. One of the "indicia of nonobviousness" is commercial success, which in my mind means that the invention has some value.

"Or should a reasonable Examiner be able to say, "Nothing has been achieved here that wouldn't be obvious to someone trying to combine those three devices"?"
In some instances the invention is not the result of discovering the solution, but instead, it is a result of discovering the problem. As noted by many commentators, sometimes an invention isn't a result of an inventor coming up with a new combination that produces some unexpected results. Instead, the invention comes from having the insight to recognize a problem that no one ever recognized before, and the resultant device/method/etc. that solves the problem could easily be derived by one having ordinary skill in the art had they also recognized the problem As such, a device may produce nothing unexpected and work exactly as anticipated, but still be deemed inventive.

"It is simply a laugh to come here and read comments from ostensibly "pro-patent" types who expect me to shed tears for the poor client who, but for some "arbitrary" decision at the PTO, would be saving the world and making everybody rich in the process. Really, now. How naive does one have to be to fall for this stuff?"
I don't think that anybody who has posted has stated that the PTO is preventing people from "saving the world and making everybody rich in the process." The simple point is that every time an examiner improperly rejects a claim for obviousness based upon insufficient factual support, both the inventor's and patent attorney's expectations of what is not obvious is reduced. Eventually, the weight of bad rejections will force both inventors and patent attorneys not to file patent applications on otherwise patentable subject matter.

It is easy for a patent attorney/inventor to give in and just take what is offered, and it is much harder and more expensive to fight. Clients without deep pockets cannot afford to fight and, on average, will obtain patents with reduced scoped (or no patent at all).

[Alan McDonald]

"Let's put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?
Good question, but my answer is probably what you don't expect. If nobody has suggested that particular combination, then I don't have a problem having a patent issue for that combination. If the combination is valueless, then why does anybody care? I see absolutely no harm (to anybody), except to the inventor's check book, for having that type of patent issue."

It is WAY too long ago, but I remember from my law school days that the PTO rejected the eraser on the end of a pencil application as "an agglomeration". Each of the elements were preforming exactly the same function that they performed without being combined, so there was no invention in combining them. No need for a motivation to combine in those days.

[Fredric Goldstein]

Bravo to pds who managed to be so diplomatic when taking to task Malcolm Mooney's rantings on shedding tears, saving the world, etc which I assume was an attempted referencing of an earlier comment of mine. Malcolm, a hint- don't put in quotation marks something which cannot be attributed to anyone, e.g. "arbitrary".

Honestly, I can't see Mooney's career choice with so many caustic remarks in nearly all his postings about patents, the client, and the system. With that sort of attitude, no one expects you to "shed tears for [your] poor clients" under any circumstance.

The issue I was referring to was that more worthy inventions are never patented than unworthy (read, obvious) ones are and that can damage the system as well. It's not about "saving the world and making everyone rich in the process", a rather unnecessary and silly remark.

Mooney also writes:
"Prosecuting patent applications is a game of throwing wet toilet paper up against the restroom wall to see how much of it you can get to stick. For every "invention" (i.e., an invention meeting the statutory requirements) dreamed of in a typical application, there are a hundred fumbling-in-the-dark dead-on-arrival worthless "teachings" that will be resuscitated and thrown at the Examiner should the inventors "desired" claim get tanked."

It's this sort of prosecution that fouls up the patent system and might make examiners as cynical as Mooney. "Throwing wet toilet paper up against the bathroom wall"? Sure, Malcolm, but please, not here and not after it's been used...

[John]

"Let's put it this way: should a combination flashlight/toothbrush/belly button lint remover be patentable simply because nobody in the past had enough money or time to waste trying to patent it?
Good question, but my answer is probably what you don't expect. If nobody has suggested that particular combination, then I don't have a problem having a patent issue for that combination. If the combination is valueless, then why does anybody care? I see absolutely no harm (to anybody), except to the inventor's check book, for having that type of patent issue."

You're missing the point, which is whether combinations that can be put together by anyone [i.e., obvious] should be patentable. Aforementioned ridiculous patent in the realm of the infamous pumpkin bag are patentable under the TSM test. They may be valueless, but they are not entirely harmless if we let people just patent anything they wish. Ever heard of the "tragedy of the anticommons"? I highly recommend it as it gives a very convincing dissertation on the detrimental effect the tragedy may have on the IT/computer industry. To put it simply for you, imagine living in a society where everything can be patented just because TSM has removed any semblance of obviousness. Would you be able to eat your meals with the combination of forks, knives, and perhaps chopsticks?

[John]

"Honestly, I can't see Mooney's career choice with so many caustic remarks in nearly all his postings about patents, the client, and the system. With that sort of attitude, no one expects you to "shed tears for [your] poor clients" under any circumstance."

I don't see how Mooney's remarks would reflect negatively on his career choice. Actually, I believe there are two camps of attorneys: one that genuinely cares about the state of the patent system and is concerned about the deteriorating quality of patents issued due to TSM; another one that refuses to acknowledge any problems and tries to defend the patentability of "a combination flashlight/toothbrush/belly button lint remover". Which is more credible and is an asset to his professional field?

[Tom Barniak Jr.]

Amen to the posting from pds to refutiate Mooney's lambasting of the patent system as it now stands and to some extent, his own line of work. Pds made an excellent absolutely true comment on the inventor recognizing a problem that was yet to be fixed and then coming up with a combination of old elements in a new way to address and solve the problem and possibly 'saving the world' as a result. Hey Mooney, hope none of your current or future clients see what you really think about inventors and the system-your business will go to Zero.

[Scot]

"... Hey Mooney, hope none of your current or future clients see what you really think about inventors and the system-your business will go to Zero."

Or Mooney will get all the business he can handle from the big corporations filing against the trolls... while the trolls will wither away and their attorney henchmen's business will "go to Zero".

[Dennis Crouch]

On Mooney et. al, I don't think that it is at all clear that the TSM test increases job security for patent attorneys in any way.

[Malcom Mooney]

Who gets to decide what examiners are reasonable? Who gets to decide what arguments are reasonable? Also, on what basis should the reasonableness of the examiner and the examiner's arguments be reviewed? How do we know if the examiner's "reasonable" argument wasn't based upon prejudice against the inventor/attorney? How do we know that the stated motivation to combine wasn't a result of the examiner reading applicant's disclosure, in which applicant described the problem to be solved and how applicant went about in solving the problem, and the examiner determined that the examiner himself/herself would have done exactly the same?

You raise these questions as if they pose problems that are unique to a particular framework for deciding obviousness. They are not unique.

In the law as elsewhere, decisions are made by "deciders" (if I may quote a genuine idiot). Every one of those decisions is subject to second-guessing and every one of those decisions is second-guessed when the patent is litigated.

I have a problem tightening up the requirements for having a patent granted just to prevent valueless patents from issuing.

Why?

[Malcolm Mooney]

My apologies for the previous post where my indicia of quotation were deleted. Here's a repost (the previous one should be deleted).

"Who gets to decide what examiners are reasonable? Who gets to decide what arguments are reasonable? Also, on what basis should the reasonableness of the examiner and the examiner's arguments be reviewed? How do we know if the examiner's "reasonable" argument wasn't based upon prejudice against the inventor/attorney? How do we know that the stated motivation to combine wasn't a result of the examiner reading applicant's disclosure, in which applicant described the problem to be solved and how applicant went about in solving the problem, and the examiner determined that the examiner himself/herself would have done exactly the same?"

You raise these questions as if they pose problems that are unique to a particular framework for deciding obviousness. They are not unique.

In the law as elsewhere, decisions are made by "deciders" (if I may quote a genuine idiot). Every one of those decisions is subject to second-guessing and every one of those decisions is second-guessed when the patent is litigated.

"I have a problem tightening up the requirements for having a patent granted just to prevent valueless patents from issuing."

Why?

[Fredric Goldstein]

Hej John, you can't be serious. Do you really put those sorts of remarks down as someone who "genuinely cares about the state of the patent system and is concerned about the deteriorating quality of patents issued due to TSM". Plu-lezz. Himself using "wet toilet paper up against a bathroom wall" describing his particular brand of patent prosecution? It's simply distain for the entire patent system in these sorts of postings, entertaining as they may be.
If you want to segregate a very complex issue into two divergent camps as if it were black and white, with no gray area, better go into politics. Everyone wants a better patent system, there's just a difference of opinion as to how to achieve that. Obviously, though, your side is the concerned reasonable one, while you label those who might not agree with your point of view (thousands of patent attorneys, the CAFC en banc, etc) as clueless to any problems and, in fact, ridiculous (yeah, the old toothbrush/flashlight/belly button lint remover cheap shot). Question: if one adds a wet toilet paper remover to the aforementioned invention, would THAT combination be obvious?

[Fredric Goldstein]

Scot, you might think about patenting that chip on your shoulder- "attorney henchman"? That's the third time in this series of postings alone that you've used that little ditty. Apparently, my comment earlier about that doesn't dissuade you.

What I fail to understand is how you keep coming back to "trolls" when the issue at hand is obviousness. Ironically, Mooney, who you chose to defend, stated in one of his earlier posting "Anybody who uses the "t" word in a discussion about the law of obviousness should see a shrink."

[Malcolm Mooney]

Frederic

"Himself using "wet toilet paper up against a bathroom wall" describing his particular brand of patent prosecution?"

Nice try, Frederik.

"It's simply distain for the entire patent system in these sorts of postings"

No, not really. It's disdain for the current state of affairs at the USPTO. I am not sure why you appear to believe that this is an invalid viewpoint, Frederik.

"If you want to segregate a very complex issue into two divergent camps as if it were black and white, with no gray area, better go into politics."

PTO policies are political. The American public has opinions about patents.

"Everyone wants a better patent system"

If "everyone" included major corporations like Microsoft, IBM, etc., we'd have a better patent system because their lobbyists would ensure that the PTO and its employees are well-funded. See, e.g., the defense industry.

"there's just a difference of opinion as to how to achieve that."

There is a perception that has been noted in our media that too many patents are issuing on obvious inventions. One way to reduce the number of those patents is to provide Examiners with legal tools which make it easier to reject such patents.

[Malcolm Mooney]

Tom Barniak, Jr.

Hey Mooney, hope none of your current or future clients see what you really think about inventors and the system-your business will go to Zero.

That would stink if my business went to zero.

I'm very honest with my prosecution clients about the "system" and what I think about it. I try to help them see for themselves what sort of applications get filed versus what sort of claims issue, how long it takes, etc. The smart clients take the uncertainties and risks into consideration when they develop their portfolios.

But some clients simply can't be educated or are very very slow to "get it." They throw good money after bad. Where do they get the money? From silly rich people, of course.

[Tom Barniak Jr]

Hey Scot,
What's your definition of a patent troll anyways- Is it someone who owns a patent that is obvious to other patents that are obvious to other patents but still managed to be granted because something was deemed to be novel about it after all was said and done by the Examiner---and granted --- and if that same person spent his or her own money to make their product and tried to get it into the public domain and after all of that a big company that already manufactures a line of products that are similiar but not quite the same-after all, that person has a patent to manufacture their patented product- that company decided to make this person's patented product without his or her permission, would that person with the patent be a patent troll by your definition and would the attorney that this person hires to sue for infringement be one of those 'attorney henchmen' you speak of?
Whew! Enlighten me, Scot.

[anonymous]

I'm having to go back 10 comments or so to figure out what the substance of the debate is. This name-calling is unproductive. As far as I can tell, the substantive arguments of the commenters look something like this:

* Scot thinks that the problem with the patent system is that the obviousness bar has been set too low by the CAFC, thus allowing people who haven't contributed anything inventive to freeride off of the commercial success of others. He finds the briefs to the contrary weak and unconvincing.

* Mr. Mooney agrees that there are bad patents out there, thinks that the TSM test is a good filter for weeding out obvious patents, and thinks that the problem is with the PTO, and the answer is to give the PTO the resources they need to use it properly. He also thinks that the word "troll" is a loaded term that doesn't advance the discussion.

* Mr. Goldstein (forgive me if I'm butchering this -- I'm going off of the 10/15 2:04PM post) thinks that a lot of the arguments being thrown around have more to do with whose ox is being gored than what's best for the patent system or intellectually coherent. Sakraida isn't any better or worse than TSM, and going back to it won't fix the problem.

* Mr. Barniak agrees with Mr. Mooney that the term "patent troll" is unhelpful to productive discourse on the patent system, and thinks that discarding the TSM test will increase the danger of hindsight obviousness analysis and cause some genuinely good inventions to be scuttled unjustly by the PTO.

* PDS notes that there is a lot of focus on bad patents being allowed, and not much discussion of the cost to the system of bad REJECTIONS.

These are all decent, arguable points. I've left out the part about what each of the commenters thinks of the others as human beings and professionals. If you want to continue debating this topic, might I suggest that you go back to your substantive points. Dennis has set up a nice comprehensive post on what may be the most important patent case in 50 years (or at least 5), and it seems to me a shame to clutter it with discussions of henchment flinging toilet paper.

[mmmbeer]

First, I think that most companies and most patent attornies ordinarily do not seek out bad patents. Both generally believe that the substance of thier patent is both worthwhile and inventive. That said, there are surely those who have no such belief and are willing to game the prosecution system to obtain the presumption of validity accorded them in an issued patent covering something already known in the art.

And, just to clarify, contrary to pds' assertions above, a PHOSITA is presumed (perhaps unreasonably) to have knowledge of all /pertinent/ prior art (In re Winslow and Custom Accessories v. Jeffrey-Allan).

[mmmbeer]

God, it's time to go home. My spelling was horrid in that last post.

[Malcom Mooney]

pds

"The simple point is that every time an examiner improperly rejects a claim for obviousness based upon insufficient factual support, both the inventor's and patent attorney's expectations of what is not obvious is reduced."

Their expectations are reduced whether the rejection is "proper" or not.

But the big question is: how often are examiners "improperly" rejecting claims as obvious? Are these "improper" rejections really a problem? It sure doesn't seem so from where I'm sitting.

On the contrary, if I've loaded my specification up with enough trivia and boilerplate I should be able to find an undisclosed unsuggested embodiment, I can typically find *something* that an Examiner will allow even though personally -- just between you and me -- that "invention" was more of a product of artificial selection by the PTO than it was my client's brilliant conception.

And then sometimes we get lucky, don't we?

[Tom Kulaga]

Mr. Moody asks:

"But the big question is: how often are examiners "improperly" rejecting claims as obvious? Are these "improper" rejections really a problem? It sure doesn't seem so from where I'm sitting."

I invite you to sit in my chair for a while. The vast majority of rejections I receive are for obviousness. Most of the rejections do not even cite art that identifies all of the elements of the claim, and for those rejections that do cite art containing all the elements, more than likely the art does not include the specific limitations of those elements. And, lately, almost every rejection ends with a TSM assertion that the combination is obvious because it solves problem "y." Of course, problem y has nothing to do with the invention or the problem identified in the spec, and it is usually very generic, such as, the combination is obvious because it reduces manufacturing costs or increases efficiency. Duh!

These rejections cost my clients unnecessary money and time. I consider that a problem (for them).

[Fredric Goldstein]

Anonymous: Nice to stand above the fray. No one is attacking anyone's humanity here, as there are quite a few other websites with lawyers jokes which do that just fine. These are not court filings but rather bloggs which should have some degree of spice to them, dry but not shaken. Nothing wrong with some animated discourse. If the taunting of attorneys on a legal website with the continual use of "attorney henchman", coupled with the taunting of patent holders as "trolls", together with the seeming assertion that anyone who files a patent infringement case is (1) a troll who(2)is doing it with an obvious patent- if this is not enough to call it like it is and cut to the chase, then maybe one should stick to infra-firm e-mails. One posts his comment to make a point and to solicit feedback. The feedback has been by and large parallel to the quality of the comments at issue. Dennis' site hardly needs a school ma'am to guard its place as the best patent blogg out there.
By the way, I generally enjoy your comments and would be interested in hearing you weigh in on this, as you put it, the most important patent case in 50 years.

I think what has been missed in everything I have read however is the difference between patent prosecution now and, say, 50 years ago. There are millions more prior art patents today to use to combine particular elements in order to render a patent "obvious". So with millions more material at hand, you need firm guidelines for its use. The law has to evolve and the CAFC has understood that since its conception nearly 25 years ago.

[LawStudent2187]

It seems to me that the more objective nature of TSM should ultimately lead to a better patent system. Alternatives involving reasonable examiners or any other fictitious legal creations will make the system too unpredictable.

Granted, this "better" system will allow patents to issue for arguably useless inventions, but I don't believe that undermines the system. The issue of whether something is profitable/useful/marketable/etc. is completely different from whether it's obvious.

Many inventions were designed to address a particular problem, so they present no obviousness problem. But many others are essentially creations looking for a problem to solve. Nobody recognized having a grayish colored shirt as a problem until someone made something that allowed that shirt to be as white as it could be. Bingo! "Problem" solved!

The same applies to the combination lint remover. It's a perfectly silly example that illustrates the point. Where's the harm in issuing a patent on it? If it turns out to be useful, people will use it and no one can argue it's obvious or frivolous or a waste of time.

Of course the PTO will continue to be burdened with applications for inventions of questionable value, but certainly that same problem existed (admittedly to a lesser extent) before TSM. Indeed, the entire legal system is intentionally frivolous to the extent that an attorney zealousy represents a client to the point of arguing anything that won't get him/her laughed out of court.

Stick with an objective test. The legal system should strive to be as objective as possible.

[Malcolm Mooney]

"I invite you to sit in my chair for a while."

I invite you to show me a concrete example of what you're talking about. Perhaps you can direct me to one of these improper rejections in the publically available file history of a patent that has issued.

That still wouldn't prove that there is a plague of "improper" rejections founded on a reasonable Examiner's understanding of how humans solve certain elementary problems. But it would be a start.

[Malcolm Mooney]

LawStudent:

"The same applies to the combination lint remover. It's a perfectly silly example that illustrates the point. Where's the harm in issuing a patent on it? If it turns out to be useful, people will use it and no one can argue it's obvious or frivolous or a waste of time."

Well, utility is one of statutory requirements so let's assume that the DentoLintoLight(TM) is "useful" in the abstract sense.

Whether in fact anybody actually WANTS to use the invention is another issue. Is there a harm in issuing dubious borderline obvious patents on stuff that nobody wants to use?

Off the top of my head, I'd say that the inventors of desirable and less obvious inventions are harmed by the fact that the securing of their rights is made more difficult when the USPTO is stretched to the breaking point trying to find art with which to squash intentionally inarticulately worded garbage.

Fredric brings up a good point about the changing landscape. Does anyone have any data which suggests that, per capita, humans are more innovative in 2006 than they were in 1956?

[pds]

"Off the top of my head, I'd say that the inventors of desirable and less obvious inventions are harmed by the fact that the securing of their rights is made more difficult when the USPTO is stretched to the breaking point trying to find art with which to squash intentionally inarticulately worded garbage."

I believe harm definitely happens in the following situation. A patent application is filed on an invention, which when anybody looks at it, that person says "this is so obvious and simple, anybody could have come up with." The additional facts are that it has value (i.e., commercial success), because not only are the inventors are selling it but it is being copied by competitors. However, the examiner (based upon a new Supreme Court ruling allowing for obviousness rulings by patent examiners based upon the examiner's subjective belief) rejects the application as being obvious despite there being no TSM to support the obviousness rejection. In this situation, not only is great harm done unto the inventors, the goal set forth in the U.S. Constitution to promote the progress of science and the useful arts is frustrated.

As I've discussed before, for those inventions that are completely valueless (i.e., nonsensical inventions that are easily designed around, incredibly narrow, or are to directed to subject matter that no one would want to practice), then what is the harm if no TSM can be found and the application issues as a patent? If the public isn't practicing the invention or could easily get around the claimed invention, then what is the harm?

However, if the patent does have value (even marginal value) and the Examiner cannot discover a TSM within the prior art, then I would rather have the patent issue (instead of being rejected based upon some subjective standard) for two reasons. First, the fact that the patent has value is evidence of commercial success which is a recognized indicia of non-obviousness.

Second, a potential infringer (or licensee) has considerably more resources and incentive to find prior art references that provide a TSM. I have no doubt that a potential infringer would spend 10x (if not much more) the resources that the Patent Office would spend in order to invalidate a patent. If, after spending those resources, TSM cannot be found, then I think that absence of a TSM leads great credence to the PTO's determination that the claimed subject matter is patentable. However, in many instances, because of the greater resources employed during the search for both TSM (and 102 art), odds are very great that better art can be applied against the invention. I think that many patent litigators would agree with the statement that the real test of patentability does not happen at the PTO, but instead, the real test of patentability occurs during litigation.

Given these arguments, let us look at the downside of allowing an application that would otherwise be rejected if it not were for the TSM test. For valueless patents, there is no downside to the public, since the public simply does not care. For valuable patents, a potential infringer/licensee will have both the incentive and the resources to do a much better search than the Patent Office. As such, if the second (more comprehensive) search discovers good prior art that wasn't discovered by the Patent Office, then not only is the harm reduced to the public, but the part of the public (i.e., the licensee/infringer) that is most directly affected by the patent pays for those costs. However, if the second search doesn't find better art, then the invention was not as obvious as originally thought.

[anon]

It seems that the pro-patent people here are trotting out a frequent argument in support of lax patentability standards: If the patent is obvious, issue it anyway because it is also likely to be valueless.

I think the petitioner's brief refutes this argument pretty well, but here we go again. A patent's economic value and the technical skill required to overcome obviousness rejections pretty much have nothing to do with each other. Suppose tomorrow a scientist discovers cold fusion and patents the process of cold fusion-no question that it is well deserved. I read the patent and realize that it is a great idea to use the cold fusion described to produce electricity. The patent office issues a rejection but I scream there is no TSM for combining this particular cold fusion process with producing electricity, and the examiner, finding no TSM, issues the patent. I now get a claim to the entire economic value of the cold fusion process.

[Scot]

"No one is attacking anyone's humanity here, as there are quite a few other websites with lawyers jokes which do that just fine. These are not court filings but rather bloggs which should have some degree of spice to them, dry but not shaken. Nothing wrong with some animated discourse."

I would have to agree with Frederique. We are all big boys here who can give and take some. The descriptive adjectives are the spices that enlivens the discourse of this obviously very divisive topic.

[Fredric Goldstein]

Malcolm raises an interesting point about per capita patent rates, even if that was not quite what I was referring to. With a population increasing exponentially, over a period of time there will be millions more patents with or without a per capita increase.

I was making the point that since the primary issue here is that of the TSM for prior art patents, with millions more patents available to reference the elements in the invention seeking the patent, it is far easier to justify the hindsight one has to avoid. It's just too big a shopping list at seven million plus patents now. Therefore, as stated, strick guidelines for citing these patents are required.

As to the per captita rate today, it's totally skewed by big corporations trying to get as many patents as possible, many of which are commercially worthless, as if these are real assets that will provide a return, a sort of get the biggest IP portfolio as possible game. I wonder if individual inventors, where the patent, if assigned, is to a small entity, has increased or decreased in patents. I am guessing the later. Now is this due to economics of commercializing the invention or is it due to the cost of a patent today?

[pds]

"It seems that the pro-patent people here are trotting out a frequent argument in support of lax patentability standards: If the patent is obvious, issue it anyway because it is also likely to be valueless."

Nice try at trying to twist my argument. First, I'm not sure where you derived the "lax" in your assertion of "lax patentability standards." The patentability standard being discussed (i.e., the TSM test) is the CURRENT standard.

With regard to the assertion "if the patent is obvious," no one has argued that obvious patents should be issued. As I have previously discussed and for many reasons, I believe that neither you (as an examiner) nor I (as a patent attorney) can make a proper determination of obviousness based upon 35 U.S.C. § 103, since we are not "a person having ordinary skill in the art to which said subject matter pertains." Therefore, when you state "if the patent is obvious," you are making an assumption that the "pro-patent people" have not made. To make it clear, the assumption that I have made is that the patent may be looked at as being obvious by the layperson, but a proper obviousness determination has not been made because lack of a proper TSM. Just because an invention may be obvious to a layperson does not mean that the invention is obvious within the meaning of 35 U.S.C. § 103 for the simple reason that the layperson has the benefit of impermissible hindsight reconstruction.

As for the statement "issue it anyway because it is also likely to be valueless," that has also a misstatement of my argument. First, I don't recall anybody arguing that an obvious patent is "likely to be valueless."

Moreover, my statements (which referred to valueless patents) is two pronged. First, valueless patents ***for which a TSM cannot be found*** should be allowed to issued because there is no harm to the public. The second prong is that valuable patents ***for which a TSM cannot be found*** should also be allowed to issue because the person to which the most harm can be brought upon (i.e., an infringer/licensee) has an incentive to do a much better search for TSM (or even 102 art) than what was done by the patent office. Regardless of the results of the search (better art found, or no art found), the ultimate patentability of the invention is clearer.

"A patent's economic value and the technical skill required to overcome obviousness rejections pretty much have nothing to do with each other."
Are you sure you worded this correctly? What exactly is the "technical skill required to overcome obviousness rejections"? Correct me if I wrong, but doesn't this refer to the skill of the patent attorney because only the patent attorney overcomes an obviousness rejection?

If, while referring to "technical skill," you mean one having ordinary skill in the art, then I disagree with your statement. As discussed in M.P.E.P. §§ 716.03, 2141, "commercial success" is described as an indicia of nonobviousness. Therefore, both the "patent's economic value" (i.e., commercial success) and the "technical skill" (i.e., of one having ordinary skill in the art) are both relevant to an obviousness determination.

"I read the patent and realize that it is a great idea to use the cold fusion described to produce electricity. The patent office issues a rejection but I scream there is no TSM for combining this particular cold fusion process with producing electricity, and the examiner, finding no TSM, issues the patent. I now get a claim to the entire economic value of the cold fusion process."

I'm glad you raised the issue of the problem of finding a good TSM for an invention that "screams" obviousness, and is a perfect segue of what I see as a major failure by examiners when putting together an obviousness rejection. I have seen thousands (if not tens of thousands) of 103 (i.e., obviousness) rejections, but I do not recall not even one rejection in which an examiner used more than a single reference to support the modification for a single limitation. I'm not talking about using multiple references to teach multiple limitations, but instead about multiple references for a single limitation.

What I have garnered from the posting on this board (presumably by patent examiners) and from the writings within the briefs in support of petitioner is a general feeling that certain "obvious" patents cannot be rejected for lack of a TSM. The problem I see is that all examiners are looking for a single "silver bullet" reference that provides all the teachings/suggestions/motivations for supplying the missing references. However, what they don't recognize is that sometimes you cannot go from A to B in one step. Sometimes, you need to go from A to F (with reference X), go from F to J (with reference Y), and then go to from J to B (with reference Z).

Is this harder for an examiner to do? ... absolutely yes, but to prove obviousness where the prior art does not provide the perfect reference, it is absolutely necessary.

[anonymous]

The rest of the bottom-side briefs are here
http://www.scotusblog.com/movabletype/archives/KSR_Bottom.html

Sometimes it's interesting to look at the lineup of amici in these cases--like if you're not sure if a criminal law rule would help or hurt defendants, look to see where the defense bar is lining up. In this case, as far as I can tell, there are big and small companies on both sides, as well as the usual assortment of law professors.

Why do you suppose the amici supporting the TSM test do so? Is it: (1) they think it's great, (2) they think that it's flawed but still the best available, (3) they think it's awful, but it's the "devil you know" and they're afraid the Supreme Court will screw it up, or (4) something else?

[Malcolm Mooney]

A couple quickies as I drive by this morning...

pds writes

"I don't recall anybody arguing that an obvious patent is "likely to be valueless."

What percentage of issued patents are valueless? I would bet that most VALID patents are valueless.

"valueless patents ***for which a TSM cannot be found*** should be allowed to issued because there is no harm to the public."

I provided you with an example of the harm that results from the strict application of an explicit TSM test.

"I have seen thousands (if not tens of thousands) of 103 (i.e., obviousness) rejections, but I do not recall not even one rejection in which an examiner used more than a single reference to support the modification for a single limitation."

Without addressing possible lapses of memory, there is a simple answer to this problem: the Examiners are under time constraints which simply do not permit them to craft perfect rejections where every possible claim is supported by a literature citation.

This is the crux of the problem. Strict application of an explicit TSM test which pretends that Examiners are lying scientifically illiterate morons who must provide textual backup for every one of their assertions just leads to endless goalpost moving by attorneys as they keep adding elements to their invention as necessary to find that combination that "wasn't taught in the art."

This is inventing?????

"the fact that the patent has value is evidence of commercial success which is a recognized indicia of non-obviousness."

I think that bringing up the secondary factors is shooting your pro-strict TSM arguments in the foot. After all, who decides what "commercial success" is? And why should these "secondary factors" play any role in determining obviousness? If there isn't an explicit TSM under the strict test, then there isn't an explicit TSM and the invention is non-obvious. End of analysis. Why go further?

[Joe Smith]

I am not a patent attorney. However, it appears to me that the TSM test for obviousness results in patents for inventions which needed no encouragement from a patent system.

We now know that technological progress is essentially inevitable. The founding fathers did not have the same confidence. If persons skilled in the art were divided by into quintiles then it would be those in the third quintile who would be the yardstick for obviousness (they being those of ordinary, as opposed to superior, skill).

If patents are only disallowed when they are obvious to those of ordinary skill then we are allowing patents which would have been obvious with a few minutes thought by a practioner in the first or second quintile. Those patents need no encouragement and allowing one person to stake a monopoly on such an advance does enormous harm to the overall economy.

The real problem is that obviousness as currently interpreted by the courts results in the grant of monopolies beyond what Congress is permitted to do. There is no natural property right in an idea (although most patent practioners seem to assume that there is) and the common law abhorred monopolies (which patent practioners uniformly ignore).

SCOTUS should either save the statute by giving "obvious" a meaning which sets a MUCH higher standard for patents or strike down the system entirely.

[pds]

" What percentage of issued patents are valueless? I would bet that most VALID patents are valueless."

... and if true, proves what? or supports what position? I don't disagree that many patents, taken in isolation, are valueless.

A good indication of whether or not an issued patent is considered to have value would be to look at the rate percentage of patents have their maintenance fees paid. If someone pays the maintenance fees, then a determination had been made that the patent has some value. I wonder how we could get that information.

"I provided you with an example of the harm that results from the strict application of an explicit TSM test."

Oh right, I forgot, you wrote "Off the top of my head, I'd say that the inventors of desirable and less obvious inventions are harmed by the fact that the securing of their rights is made more difficult when the USPTO is stretched to the breaking point trying to find art with which to squash intentionally inarticulately worded garbage."

I could not, however, follow your logic. I'm not sure how inventors of "desirably and less obvious inventions are harmed." These patents will be issued regardless, so what is the harm?

If the harm is caused because these patents aren't issued as quickly because of the backlog at the patent office, then I'm not sure that the proposed change (i.e., allowing examiners to make subjective obviousness determinations) is the only way to improve the backlog. In fact, either making it very easy to obtain patent (or make it extremely difficult to obtain a patent) will reduce backlog because the dispositions can be done much more easily. Also, adding additional examiners will reduce the backlog.

Regardless, your allegation of "harm" doesn't seem to me to be very persuasive.

The following brief (I have tried to read them all) is one of my favorites,

http://www.scotusblog.com/movabletype/archives/Investors.pdf

and this paragraph address the issue of the backlog at the PTO:

If there is a real problem with patent quality, the source of it is the PTO, not the Federal Circuit’s standard. The PTO has a massive backlog, and it is universally acknowledged to be underfunded and understaffed. Examiners have historically operated under a regime of incentives that rewards them for disposing of applications quickly, not well. Morale is low, and the turnover rate among examiners is 50% in a five-year period. See, e.g., Jeff Nesmith, Patents Pending, AUSTIN AM.-STATESMAN, Aug. 27, 2006. In these circumstances, it is not at all surprising that the PTO would make some mistakes in issuing patents. If they see fit, Congress and the Executive could address the problems by giving the PTO additional funding and additional staffing, or mandating a reform of incentive structures. This Court, however, is not in a position to fix problems at the PTO, and ultimately it would be counterproductive to try to address those problems by substituting either an amorphous or a hindsight-driven test for the Federal Circuit’s studied handiwork in a corner of patent law that is not the real problem.

"This is the crux of the problem. Strict application of an explicit TSM test which pretends that Examiners are lying scientifically illiterate morons who must provide textual backup for every one of their assertions just leads to endless goalpost moving by attorneys as they keep adding elements to their invention as necessary to find that combination that "wasn't taught in the art.""

You are a tough nut to figure out. No one has accused the examiners of being "lying scientifically illiterate morons." If you read the numerous briefs in support of Respondent, they all caution about the problem associated with preventing hindsight reconstruction from coloring the determination of obviousness. No matter how scientifically literate a particular examiner is, the examiner is not "one having ordinary skill in the art" and the examiner is not working **only** with knowledge available to one having ordinary skill in the art the time of the invention.

"I think that bringing up the secondary factors is shooting your pro-strict TSM arguments in the foot. After all, who decides what "commercial success" is? And why should these "secondary factors" play any role in determining obviousness? If there isn't an explicit TSM under the strict test, then there isn't an explicit TSM and the invention is non-obvious. End of analysis. Why go further?"

The following is from the Biotechnology Industry Organization brief:

"That is because the commercial success of an invention sought to be patented suggests it was nonobvious or else someone would have developed it earlier as an obvious means of further profit from the prior art. A long felt unsolved need in an area similarly suggests that an invention that comes along to meet the need was nonobvious or else others would have long ago developed it. And, the failure of others, of course, serves as a strong objective indication that an invention was not obvious or else others would not have met failure when they tried to develop it."

The way I like to look at is that when an examiner establishes a prima facie case of obviousness, he or she has establish that one having ordinary skill in the art *could* have arrived at the claimed invention based upon the asserted TSM. However, the requirement for obviousness is that one having ordinary skill in the art *would* have arrived at the claimed invention. Once a prima facie case of obviousness has been made, the secondary considerations are additional evidence because as stated by In re Oetiker, the ultimate determination of patentability is based on the entire record, by a preponderance of the evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.

[Malcolm Mooney]

pds

"These patents will be issued regardless, so what is the harm?"

Time is money. I thought I made that clear but I will spell it out for you: forcing Examiners to find explicit support in the literature for EVERY assertion they make in their arguments supporting the obviousness of a claim is time-consuming. And that is what a strictly applied TSM will force Examiners to do. Or to put it more plainly, that is what a good attorney will force the Examiner to do. And if most "inventions" put before the PTO are garbage -- which is almost surely the case given what comes out of the PTO as a valid patent -- then those inventors with real inventions are being harmed by the noise and distraction created by those who are clogging the system.

"'What percentage of issued patents are valueless? I would bet that most VALID patents are valueless.'"

... and if true, proves what?"

It proves that most patent applications waste the PTO's limited resources. Remember? The problem is: too many garbage patent applications being filed because applicants perceive that it is worth the money to file them to see what "invention" hasn't been explicitly disclosed or suggested. One solution: make sure that the burden of "proving" obviousness is not onerous by allowing Examiner's the freedom to make reasonable obviousness arguments without providing an explicit citation to the literature showing where every "combination" of elements in a claim was "suggested" or where every scientific fact at issue was proven.

Lastly, your response to my criticism of the secondary factors simply begs the question. If the problem is Examiners bringing in their own "opinions" (albeit reasonable and fact-based opinions) into the determination, then it seems that "indicia" such as "commercial success" and "long felt need" should be evaluated against equally strict and explicit bright-line guidelines. Otherwise, once again, we have Examiners making decisions about matters in which they are (allegedly) unskilled and to which they may bring their own personal biases and cause all of these "unpredictable" outcomes which drives people nuts.

The strict/explicit TSM will not increase the "predictability" of the patent system. It will not make issued patents less subject to groaning ridicule by the public and by experts in the field.

But I do think that if a significantly greater percentage of patent applications are rejected by the PTO, fewer and better patent applications will be filed.

Now who could possibly object to that result?

[Malcom Mooney]

One quick comment re the Biotechnology Industry Organization: these folks should be more concerned about what's going to happen when the Supreme's get the chance to take another shot at the LabCorp. v. Metabolite issue.

This is an industry whose "intellectual property" consists in large part of (1) discovering some natural fact about animal biology and (2) dumping claims off at the PTO reciting all the obvious methods that anyone with a bachelor's degree in the field would tell you can be practiced with that information.

[Tony]

Guys,

Let's be realistic here. No matter how much money gets thrown at the patent system, some applications that are, well, to be diplomatic less than extraordinary, will get issued.

In essence, the PTO needs to have its funding increased to increase the number of examiners, the amount of hours the examiners spend on rejections (probably by at least 50%), and the amount of review (by primary examiners or some other review entity) should increase to get relatively consistent rejections under the current system.

Otherwise, no matter what the system, someone is always going to gripe about how bad it is in some respect.

Just my 2 cents.

[SF]

I predict that the Supreme Court will retain a requirement for some evidence of a teaching, suggestion, motivation or *other reason* (the obligatory catch-all) for combining references at the time the invention was made.

I also predict that they will state that the evidence may be written or not and may be explicit or implicit, depending upon the particular facts of the case.

Any different predictions out there?

[Joe Smith]

Malcolm Mooney's comment on the biotechnology industry illustrates one of the problems with the patent system - namely that invention as such is frequently a small and insignificant part of a longer process which may involve basic research, search for a problem, the actual inventive step of solving a problem in principle, the engineering step of implementing the solution, product design, manufacturing and marketing. For pharmaceuticals the patent system is being used to try to protect the cost of proving that drugs are safe and effective(as opposed to the cost of discovering new drugs). There are companies out there (some might call them trolls) who try to stake a claim to the inventive step so that they can capture the value that someone else has invested in product design , engineering and marketing (see e.g. NTP v. RIM)

[pds]

"Time is money. I thought I made that clear but I will spell it out for you: forcing Examiners to find explicit support in the literature for EVERY assertion they make in their arguments supporting the obviousness of a claim is time-consuming."

Wouldn't life be much easier if nobody had to support his or her assertions. Imagine how we could revolutionalize the legal industry. Why should attorneys spend so much time poring over case law to prove a legal argument that the attorneys knows must obviously be true? We can save money by not having to subscribe to Westlaw/Lexus Nexus or purchasing case reporters. No more Shepardizing of cases. All you need to do, based upon your own experience as an attorney, is make your legal argument. Imagine the millions and millions of billable hours that could be saved.

We can use the same procedure at the other governmental agencies. For example, imagine the FDA when the issue of people serving raw fish at restaurants came up. The decision could have gone something like this ... "well, everybody know that eating raw fish is bad for you, that's why we cook it, so we do we need to investigate this further ... I think we should ban this practice."

"It proves that most patent applications waste the PTO's limited resources. Remember?"
So how does the changing the obviousness standard change anything besides eventually reducing the number of patents being filed? Your argument inherently presumes that valueless patents are also obvious patents for which a TSM does not exist. However, I don't think anyone has alleged that definitely non-obvious inventions are, on average, more likely to be valuable than inventions that would be considered obvious were it not for the TSM requirement or vice versa.

"If the problem is Examiners bringing in their own "opinions" (albeit reasonable and fact-based opinions) into the determination, then it seems that "indicia" such as "commercial success" and "long felt need" should be evaluated against equally strict and explicit bright-line guidelines."
Have you ever picked up the MPEP? You claim to have litigated patents, and I admit that I have not. However, I find it hard to believe that you are ignorant as to the case law that surrounds secondary considerations. A discussion of the guidelines for these secondary considerations are found in M.P.E.P. §§ 716.01 (objective evidence of nonobviousness), 716.02 (allegations of unexpected results), 716.03 (commercial success), 716.04 (long-felt need and failure of others), 716.05 (skepticism of experts), 716.06 (copying). As you are well aware, the M.P.E.P. is, in a large part, a discussion of case law regarding certain issues, and as apparent from the sections of the M.P.E.P. I cited above, there are many cases that discuss the requirements for establishing secondary considerations.

On the contrary, as noted in many of the briefs I have recently read in support of Respondent, many of the briefs for the other side, in particular the Petitioners brief, spend a lot of time attacking the TSM standard set forth by the Federal Circuit, but spend very little time describing the standard they want to apply. This reminds me to ask a question of you, which is to have you describe, in as great as detail as possible, how you believe patent examiners should be able to apply a subjective standard.

"The strict/explicit TSM will not increase the "predictability" of the patent system. It will not make issued patents less subject to groaning ridicule by the public and by experts in the field."

You should take the time and read the briefs in support of Respondents. I cannot think of one that didn't argue that the TSM test provides much more certainty that the "subjective" test proposed by Petitioner.

As I noted earlier, I liked the brief filed by the Intellectual Property Investors. Regarding the "cherry picked" patents described as examples of the Federal Circuit's jurisprudence gone bad, by my of the briefs in support of Petitioner cited, the brief addressed many of them. For example, with regard to the Halloween trash bag, the brief stated:
The Halloween trash bag patent, mentioned in at least seven briefs filed in support of petitioner, was denied by the PTO at two levels of review. In re Dembiczak, 175 F.3d 994, 996 (Fed. Cir. 1999). The Federal Circuit, contrary to the statements of some amici, did not order the PTO to grant the patent; it merely held that the PTO had not made the necessary findings for an obviousness rejection. The opinion lays out what the PTO would have had to do to properly reject the patent. In particular, the Federal Circuit explained that, if the arguments made by the Commissioner in the court of appeals regarding a motivation to combine had been made and supported in the patent office, the rejection would have been upheld. Id. at 1001. Amici thus entirely misdescribe the case when they say that “the Federal Circuit concluded that the trash bag was patentable,” Br. of Intel Corp. and Micron Tech., Inc. (“Intel”) 8.

Regarding the swing patent:

In any case, it is not as if the problem with the swing patent was the Federal Circuit’s standard. There is no reason to believe the patent covered patentable subject matter, or was new and useful, let alone nonobvious. More generally, if one combs the bowels of any government agency long enough, one is bound to find more than a few ridiculous decisions. A silly aberration far removed from the facts of this case is not evidence that an entire system is broken.

"But I do think that if a significantly greater percentage of patent applications are rejected by the PTO, fewer and better patent applications will be filed."
Now who could possibly object to that result?"

The Founding Fathers? I'm also sure that most patent examiner's would be very unhappy since the vast majority of them would lose their jobs. As for patent attorneys, instead of prosecuting patent applications, we've got a couple of million of patents that we can now invalidate based upon this new standard, so we'll be OK. As noted by a few of the briefs, any substantial change to the TSM test will open up any issued patent to being invalidated.

Personally, I know of an inventor, a classic example of a small-time inventor, who has a pending application for a very easy-to-understand product. There is a good chance, under the proposed "subjective" standard, this product wouldn't pass muster under 103 (then again, I don't think any invention has a good chance of passing muster under the subjective standard for obviousness). Anyway, this inventor has contacts with a few very large companies that are very willing to negotiate, but they won't until the inventor achieves patent protection for the product. Under your proposal, this inventor is up the proverbial creek without a paddle. In fact, under your proposal to significantly reduce the number of patents being issued, I highly suspect that small time inventors will become extinct, or at least at very endangered species. As such, I would imagine that if the Supreme Court rules in favor of the supreme court that the lobby for small inventors (which is a very vocal lobby) will lobby the Congress to change that ruling.

BTW: What was it about the practice that made you so hostile to patents, inventors, and patent attorneys? You sound like a nurse that hates patients and advocates that only those patients that have achieved as certain level of fame or success (or some other subjective standard) should receive treatment and everybody else is out of luck. I'm surprised it was Joe Smith, and not you, that advocated that the Supreme Court "strike down the system entirely."

[Malcolm Mooney]

pds

"Wouldn't life be much easier if nobody had to support his or her assertions."

Strawman.

Nobody is saying that Examiners should not have to support their assertions. The issue is whether that support must be, in every instance, backed up by explicit teaching in the prior art. That is what a strict application of the explicit TSM test would require in practice (when Examiners are forced by zealous prosecutors to back up their obviousness arguments). Anything less than that strict test is, well, fine with me.

"Why should attorneys spend so much time poring over case law to prove a legal argument that the attorneys knows must obviously be true?"

Huh? "Proving a legal argument"? We're talking about a legal test and what facts must be shown to meet the requirements of that test. As you know, depending on the circumstance, the requirements vary. And the way in which those requirements vary is mostly a matter of public policy, based on society's understanding (or perception, at least) of the risks of setting the bar too low or too high.

"In fact, under your proposal to significantly reduce the number of patents being issued, I highly suspect that small time inventors will become extinct, or at least at very endangered species."

Based on your anecdote? Give me a break.

"BTW: What was it about the practice that made you so hostile to patents, inventors, and patent attorneys?"

Sikmply because I want to see less obvious patents get issued does not mean I'm hostile to patents, inventors and patent attorneys. It's odd that someone like you who seems so obsessed with "proof" is so willing to make snap judgments. No harm done, though. ;)

[pds]

"Sikmply because I want to see less obvious patents get issued does not mean I'm hostile to patents, inventors and patent attorneys."

You may pretend not to be hostile to these patents, inventors and patent attorneys, and deep down you may actually believe that as well, but everything I have read from you indicates otherwise.

"Wouldn't life be much easier if nobody had to support his or her assertions.
Strawman."

Strawman? This is what the Government advocated in their brief:

The obviousness inquiry should not require the PTO to conduct an unnecessary search for evidence showing a particular suggestion, teaching, or motivation to make insubstantially innovative combinations of elements that are known in the prior art. The PTO should instead be allowed to bring to bear its full expertise— including its reckoning of the basic knowledge and common sense possessed by persons in particular fields of endeavor— when making the predictive judgment whether an invention would have been obvious to a person of ordinary skill in the art.

The Government doesn't want conduct an "unnecessary search for evidence" when they have already determined that the combination of elements is "insubstantially innovative." As I have written time and time again, this is the classic example of an examiner (i.e., the Government) determining, a priori, that an invention is obvious without evidence. At least today, once the examiner predetermines that an invention is obvious, the examiner has to search the prior art for a TSM to support the rejection. The Government, however, doesn't even want the examiner to take that step. All the Government wants to do is to be able to reject the application without the having to engage in the messy (but necessary in my opinion) business of providing evidence for that rejection.

Another reason why the Patent Office needs to supply objective evidence (which has been touched upon by a few of the briefs) regards application of the Administrative Procedure Act (APA) as codified in 5 U.S.C. § 706 to decision by the Patent Office. This was the basis of the decision in In re Zurko. The following section of the APA was cited in Zurko:

To the extent necessary to decision and when presented, the reviewing court shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. The reviewing court shall--
(1) compel agency action unlawfully withheld or unreasonably delayed;
and
(2) hold unlawful and set aside agency action, findings, and conclusions
found to be--
(A) **arbitrary, capricious** , an abuse of discretion, or otherwise not in accordance with law;
(B) contrary to constitutional right, power, privilege, or immunity;
(C) in excess of statutory jurisdiction, authority, or limitations, or
short of statutory right;
(D) without observance of procedure required by law;
(E) **unsupported by substantial evidence**

The court in Zurko was concerned about the portions that I emphasized with **asterisks**. Although the decision was directed to decisions by the BPAI, when the court stated that "we review factual findings for clear error, and thereby review board decisions on our own reasoning, we hope the board understands that we are more likely to appreciate and adopt reasoning similar to its reasoning when it is both well articulated and sufficiently founded on findings of fact," it is readily apparent that the BPAI's "findings of fact" can only be derived by the efforts of the examiner.

"Based on your anecdote? Give me a break."
Although it seems that I have written enough in this thread for a law article, I cannot support every argument I make with a couple pages of original analysis, citations, and a couple of studies on point. Regardless, if you want me to elaborate on that point I will. I think small inventors will become extinct, because at this time, many potential inventors are already turned off from obtaining patent protection because of the very cost of obtaining protection. As an aside, you, of course, realize that every time I (or any other patent attorney) has to fight a bad obviousness rejection based upon a weak TSM, the costs of patent protection raises. These additional costs for prosecution aren't much a deal breaker for the big clients, but for the small clients, even one extra office action may be enough for the client to give up on the patent.

However, now that you've thrown in the subjective standard, which now allows for "a significantly greater percentage of patent applications [to be] rejected by the PTO," the cost/benefit ratio becomes a lot worse for a small inventor. If a small inventor comes to me the day after the Supreme Court approves a "subjective analysis" and asks me what the chances are for their invention, my response (I like to be brutally honest with clients) may be "well, although you may spend anywhere between 10-15K over the lifetime of patent prosecution (including patent and drafting fees), odds now are that it is very unlikely you will get a patent." Based upon that very honest assessment, it will only be the very well heeled inventors or the hardcore believers (with a lot of credit cards to max out on cash advances) that will proceed with having a patent application prepared.

The problem is further exacerbated because even if an inventor is able to get a patent under this new subjective standard and tries to license the invention to the big corporations, it may very well be more profitable, on average, to infringe the patent than to license the patent because the prospects of invalidating the patent during litigation is much better if a subjective standard is employed instead of the current TSM test.

[Malcolm Mooney]

"All the Government wants to do is to be able to reject the application without the having to engage in the messy (but necessary in my opinion) business of providing evidence for that rejection."

Please note that the Government is NOT saying that Examiners should be able to reject claims without providing their reasoning for doing, i.e., for supporting their rejections. That is why I characterized your complaint above (i.e., "Wouldn't life be much easier if nobody had to support his or her assertions") as a strawman.

"These additional costs for prosecution aren't much a deal breaker for the big clients, but for the small clients, even one extra office action may be enough for the client to give up on the patent."

Gosh, my heart bleeds for these "small inventors", the riches that will be denied to them, and the 17 year monopolies that will never be if we allow Examiners to make reasonable inferences without citing a prior art reference.

Seriously, this is the weakest argument yet for issuing obvious patents: the "small inventor" will go extinct if patentable inventions become less obvious!

Maybe I should invent a better kleenex to dry all the tears of "small inventors". I got it: a combination kleenex and disposable cell phone which automatically connects to the users representatives in Congress. After the inventor finishes crying, she can quickly and easily call her Senator to complain about the unfair costs of obtaining a 17 year monopoly on the Greatest Thing Ever. Under the strict TSM test, do you suppose that would be patentable? The only thing stopping me from filing is the darn fees. Good thing I have a prototype handy or I'd forced to pet my cat to calm my nerves. Say, that gives me another idea ...

[anon]

It really does seem like people are writing law review articles here. To summerize the posts of the pro-patent people (who I hazard to guess are small inventors and prosecuting attorneys) think that (1) TSM is great because it forces examiners to back rejections with evidence, (2) examiners already don't use TSM and will be even less accomodating if the Supreme Court reverses, and (3) delay costs small inventors money that they can't afford.

I have still yet to see any reason for the antecedent question, which is why it is the examiner's burden to find a reason to reject a patent, not a patentee's burden to prove that they deserve one. The most common answer is that it forces the applicant to prove a negative; but that is not quite true. The Supreme Court cases cited by the Teleflex amici generally (with a couple of notable exceptions) use the language of "suggestion" to find validity when the prior art teaches away from the invention. It is possible to prove nonobviousness by objective evidence, it is just raising the patentability bar a lot higher.

The other answer is that reference to the person of ordinary skill without TSM introduces hindsight into the analysis. I don't really see how that argument applies, but in any event, the person of ordinary skill, TSM, and hindsight are not inseperable. No brief in KSR has yet mentioned this, but we have another area of patent law that involves a person of ordinary skill at the time of invention -- enablement. If the specification is missing gaps for the claims, those gaps can be filled by "ordinary skill in the art." No case I am aware of has ever required an express TSM to combine the spec with known prior art elements to achieve the claim. We just allow juries to fill the in blank using hindsight to find enablement. The only check there against jury hindsight is an instruction not to use hindsight (which is also the case in every other area of law, such as negligence).

[pds]

"Please note that the Government is NOT saying that Examiners should be able to reject claims without providing their reasoning for doing, i.e., for supporting their rejections."
You, I, anybody with half a brain (so between the two of us, maybe we can come up with a full brain based upon our unending posts) can come up with a rationale for combining the references. If I was an examiner, all I would do is take applicants' problem statement, state that the combination would solve the problem based upon the predictable results of combining the prior art -- applicant already should me how to do it. You could get an examiner racking up 2-3 rejections a day using that technique. Then again, that is what you want, which is that "a significantly greater percentage of patent applications [be] rejected by the PTO."

But of course, you are not hostile to patents, inventors, and patent attorneys ... I don't how I ever came up with that idea.

"Gosh, my heart bleeds for these "small inventors", the riches that will be denied to them, and the 17 year monopolies that will never be if we allow Examiners to make reasonable inferences without citing a prior art reference."

Some small-time inventor spends hundreds of hours perfect his or her invention, maybe five or ten thousand dollars to have a patent attorney prepare the application, and an examiner rejects the application based upon a couple hours of searching and a one paragraph motivation to combine based upon "reasonable references," which took about 15 minutes to write.

Again, I must have been drinking when I accused you of being hostile patents, inventors, and patent attorneys. I deeply apologize to you, as I must have really taken your statements out of context, since you appear to have a deep respect for inventors.

"Maybe I should invent a better kleenex to dry all the tears of 'small inventors'."
Let me guess, you are so good with the clients you are your firm's biggest rainmaker, which frees you up from the everyday drudgery of dealing with the patent office (which is my lot in life) and allows you all the free time in the world to post of this board.

[pds]

"I have still yet to see any reason for the antecedent question, which is why it is the examiner's burden to find a reason to reject a patent, not a patentee's burden to prove that they deserve one."
Try reviewing M.P.E.P. § 2142. The following is the first paragraph:

The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness. If, however, the examiner does produce a prima facie case, the burden of coming forward with evidence or arguments shifts to the applicant who may submit additional evidence of nonobviousness, such as comparative test data showing that the claimed invention possesses improved properties not expected by the prior art. The initial evaluation of prima facie obviousness thus relieves both the examiner and applicant from evaluating evidence beyond the prior art and the evidence in the specification as filed until the art has been shown to suggest the claimed invention.

"If the specification is missing gaps for the claims, those gaps can be filled by "ordinary skill in the art." No case I am aware of has ever required an express TSM to combine the spec with known prior art elements to achieve the claim. We just allow juries to fill the in blank using hindsight to find enablement. The only check there against jury hindsight is an instruction not to use hindsight (which is also the case in every other area of law, such as negligence)."

The two issues are very different. Regarding enablement, for example, consider a claim to a computer comprising a first processor configured to do X, and a second processor configured to do Y after receiving X from the first processor. An enablement issue may be that there was nothing mentioned in the specification (or claims) about a power supply used to power the computer. However, one having ordinary skill in the art would have easily known how to provide a power supply to the claimed computer because the evidence is abundant.

However, let's suppose for the same claim, reference A discloses a processor configured to do X and reference B discloses a processor configured to do Y. However, no TSM exists that shows a motivation to modify A in view of B. The difference is that the evidence is not abundant.

I've never been exposed to an enablement issue, but if an examiner did raise an enablement issue, my response would not be "well I think that feature A would have been known by one having ordinary skill in the art based upon my 10 years of experience practicing patent law in this field." Instead, I would look at the art to make sure that what I did assert was enabled actually was because if I could not find evidence, then I would most likely be SOL.

What I find particularly funny with regard to many of these comments about providing examiners the ability to reject applications based upon their subjective belief is M.P.E.P. § 2145, which is entitled "Consideration of Applicant's Rebuttal Arguments." In particular, I am referring to subsection (I), which is entitled "Argument Does Not Replace Evidence Where Evidence Is Necessary." Here is a snippet:

The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.").

What is good for the goose is good for the gander?

If the examiners can use common knowledge to generate their obviousness rejections, why cannot attorneys do the same? As I noted in a post in another thread regarding KSR, by allowing examiner to base their obviousness rejection on subjective evidence, it opens the door for applicants' experts (which makes it more advantage to the well-heeled clients with money to spend on experts) to introduce declarations that propose their own "subjective" findings regarding obviousness. In the end, all you end up is a p**sing contest between the examiner and applicants' experts.

As I reproduced in an earlier post from M.P.E.P. § 2142. The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). This means that Applicants just need to get about dozen or so declarations supporting the position that the proposed combination of references, based upon the declarant's subjective belief, would not have been obvious. That's a lot of evidence for the PTO to overcome … again, the whole procedure will devolve into a p**sing contest.

Are you so sure that this proposed refinement to obviousness jurisprudence will create more problems that it will solve?

[Joe Smith]

For fun I copied the above comments into Wordperfect which tells me that these comments now have over 22,000 words and fill 47 pages.

[anon]

pds:

I realize that the examiner's burden of proving a rejection is standard Federal Circuit law right now. You'll notice that all of the cases you cite from the MPEP are Fed. Cir. or CCPA cases. My question is, after putting the complete abandonment of the Fed. Cir. test on the table (and it is on the table), what is the argument for keeping the burden on the government to disprove obviousness, versus putting the burden on the applicant to prove non-obviousness? It is not how we do any other appliation to the government for a right/monopoly/benefit/etc. (since people don't like the word handout). If you want a permit of some kind, you have to submit things to the government and convince them to grant it. If you want disability benefits, you have to convince a poor overworked bureaucrat that you are, in fact, disabled. If you want asylum, you have to convince a biased immigration judge that you really will be tortured if sent home. All of these are fraught with possible arbitrary error, and believe me the option of appellate review in all of them is pretty limited.

You argument about declarations from experts misses the point. Sure appliants could submit them, they do it all the time now. But the difference between an examiner and an expert is that the examiner is also the decision-maker. In other words, in my view, the examiner is a neutral person of skill in the art the government has hired to figure out if an invention deserves a reward. In your view, I hazard to guess, the examiner is simply an obstacle to be overcome and an advocate for rejection. But that is no more the examiner's role than it is the jury's role or the trial judge's role. Once a trial judge decides to grant summary judgment (or rule for one side on a bench trial), of course, he becomes as much an advocate of invalidity as an examiner who decides to issue a rejection. And of course a trial judge must articulate his reasons within the law. But one of those reasons has always been so-and-so failed to present evidence sufficient to meet their burden of proof (and in the examiner's context, there is no statutory presumption of validity).

[pds]

Anon:

Applicant doesn't just go into the PTO and demand a patent applicant.

Applicant has to prepare and file a patent application that meeds the requirements of 35 USC 101, 112 and pay the filing fee. That is their meeting their initial burden.

"If you want a permit of some kind, you have to submit things to the government and convince them to grant it. If you want disability benefits, you have to convince a poor overworked bureaucrat that you are, in fact, disabled. If you want asylum, you have to convince a biased immigration judge that you really will be tortured if sent home."
In both instances, I'm sure both requirements are met by an application. Your arguments have completely ignored that an inventor has filed an application for patent, which meet the inventor's initial burden.

The examiner's burden, in rejecting the invention, is to identify prior art and ***explain why*** that prior art prevents the application for issuing under 35 USC 102, 103.

The problem with you requiring that an applicant prove non obviousness is the application of 35 USC 282. You want a better explanation, look at some of the Briefs for Respondants and do a search (the PDF files are searchable) for 35 USC 282.

"In your view, I hazard to guess, the examiner is simply an obstacle to be overcome and an advocate for rejection. But that is no more the examiner's role than it is the jury's role or the trial judge's role."
You need to bone up on the law if that is your belief.

If you think the examiner is impartial, then you haven't read this board or haven't read your own prior comments on this board.

If you want to compare the examiner to a judge, then you need the defenese (i.e., the application) and the prosecutor ... so who represents the prosecutor? ... well the obvious answer is the examiner.

Now I don't know about you, but I wouldn't want to go to court as a defendant when the prosecutor and the judge are one in the same.

Perhaps a better analogy would be the examiner and applicant are two parties engaged in a negotiation. If they eventually disagree, then they go to the judge (i.e., the BPAI). In this sense, when talking about "evidence," I would imagine the judge would weigh the declarations of applicant's experts and the examiner's "subjective" rejection equally.

Remember, the examiner's "subjective" rejection is not based upon the examiner's expertise as a patent examiner, but instead, it is based upon the examiner being considered as one having ordinary skill in the art (because that is the standard under 103). Thus, applicants' experts can also submit their respective opinions regarding obviousness in that role.

As such, as I stated above, using the subjective belief (whether by the examiner or applicant's expert) to determine obviosness just results in a p**sing contest.

[John]

pds, why won't you answer anon's question?

Why should the government be burdened with proving that you deserve a patent?

If I believe my invention is worth millions, I think a little burden on my part to prove validity is certainly justified.

[P.A.]

"I realize that the examiner's burden of proving a rejection is standard Federal Circuit law right now. You'll notice that all of the cases you cite from the MPEP are Fed. Cir. or CCPA cases. My question is, after putting the complete abandonment of the Fed. Cir. test on the table (and it is on the table), what is the argument for keeping the burden on the government to disprove obviousness, versus putting the burden on the applicant to prove non-obviousness?"

How about section 102: "A person shall be entitled to a patent unless --"

If CAFC, CCPA caselaw and MPEP rules are not good enough of an argument for you, how about congress? If a person is presumed entitled to a patent unless the examiner can prove otherwise in a 102 context, then it makes no sense to place the burden on the applicant for a 103...

[exam]

So government grant rules stipulating: "a person shall be entitled to a million dollar grant unless he is an incompetent idiot" means there is NO burden on the applicant to prove that he has the qualifications to not be certified as an incompetent idiot?

[anonymous]

As far as I can tell from a 5-minute westlaw search, the origin of the notion that the burden of proof lies with the examiner is In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). In that case, the CCPA thought that the language in 102 and 103 "a person shall be entitled to a patent unless" put the burden on the PTO.

The Warner panel also drew support from statements the Supreme Court's opinions in Graham and Adams. Id. at 1017.

Here's the main paragraph (though the reasoning starts well before and continues for a few pages after):

---------------------------------
We think the precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness,' clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103, see Graham and Adams. Where such proof is lacking we see no necessity for resolving doubt in favor of the Patent Office's position, for example, where, as in the above cases, the factual basis to support the legal conclusion of obviousness under section 103 is missing, and the record there supported the applicant's position that the invention was reconstructed through hindsight. Nowhere in these cases was there the necessary factual basis to support the conclusion that it would have been obvious to one of ordinary skill to bring the elements together. United States v. Adams, supra.
----------------------------

As one might expect, the full 1967 opinion doesn't seem to be available for free on the internet, but if you want to evaluate the argument for putting the burden on the PTO, I'd look there.

It might be worth noting that the Supreme Court also denied cert in that case. 389 U.S. 1057 (1968).

[Fredric Goldstein]

Well, I think this ends this board of postings. Really, where does "incompetent idiot" fit into a debate about statutory requirements in patent law? Some might find it cathartic to vent nonsense but it does foul this site. If you think a $10,000+ patent application (that's just the cost of filing it) does not fit any degree of burden of proof in the path to be granted a patent, together with responses to office actions at further cost, then what, is the applicant supposed to find any and all potential prior art himself and one by one argue against obviousness even before the examiner's first OA? No one is arguing for an end to office actions, in which the burden of proof, if that is really what it is, falls then to the applicant if, and only if, the examiner makes his prima facie case for obviousness. Is it so much to ask that the examiner articulate it fully? Isn't that a standard requirement in any prima facie analysis in law in general? Or are we to get to a "is not, is too, is not, is too.." series of exchanges between examiner and attorney if the TSM test is expelled from prosecution?

[Fredric Goldstein]

Anonymous, thanks for getting back on point in the interim.

[anonymous]

35 USC sec. 132(a) requires that an examiner state his reasons for rejecting a patent, btw. That'll still be there, regardless of what happens to TSM. KSR might just revise what reasons will be sufficient.

[Tom Barniak jr.]

Last comment by P.A. was good- its written law. Have a nice day. Unfortunately, laws can be recinded or changed.
My observation: As the owner of two patents( one that was rejected initially as obvious)-both written by myself( cheapskate-patent attorney wanted 4 grand upfront-come back for more when that's gone) and working on a third(pro-se,of course- said I was a cheapskate), I have learned a lot from this thread from reading the intellectuals(aka patent attorneys) have at it. Neither of my patents are valueless but that is only my opinion until they are actually bought and consumed by the public. I am stiving towards that goal now. Being a novice claims writer, my claims were rejected in both applications and in both applications i petitioned my examiner to write new claims for me (pro-se can do this as all patent attorneys know). Henceforth, both of my patent applications were granted (actually think my claims were better in the patent that I am now commercializing but hey,he was my Examiner-he's got at least a B.A. in an engineering field-go ahead and write 'em, beats throwing wet toilet paper at walls).
Questions for one of the patent attorneys: In the event of an infringement or an attempt at an invalidation of my patent by an infringer, is my patents weakened by this fact and in case a new subjective TSM is adopted in this pending court case is there any chance all patents granted before the judgement will be 'grandfathered' in under the current TSM, after all, they recieved a pass under that rule?
One more observation: Pds has a thorough and complete perspective on this complicated issue( not asskissing,just an observation)- Mr. Mooney makes compelling arguements about change that seem to make sense also, but then he goes on these tangential rantings whereas i loose all faith in him(as an attorney,not a homo sapien-nothing personal,just an observation.

[Fredric Goldstein]

Apropos anonymous' 11.11am posting, yes, true, but it is worthless if he articulates his reasons as simply a matter of his opinion. I am not asking for longer office actions but rather for articulating fully why two (or even three) prior art references would be combined by PHOSITA. I say "why" he would think to combine it, not "why" it would work if he did, which is sometimes all you get in an OA.

[exam]

anonymous, great work on finding the Warner case. But I am assuming the case is referring to the factual basis as established in Grahm by SCOTUS. In which case, I wonder how you would establish PHOSITA on a factual basis. If PHOSITA is established somehow, does TSM become moot?

Frederik, you have mistaken financial and work burden with burden of proof. The "incompetent idiot" remark wasn't directed at anyone -- just to cover the most undeserving people of grant money. If it touched a tell tale nerve on your part, I can't help you with that.

[Fredric Goldstein]

"exam": Maybe you have touched a nerve since like most who have tried to articulate something intelligent on this site, we have a problem with an "incompetent idiot" (your phrase, though I would chose something less incendiary). You can in fact help me with that though by sticking to the point of these postings without the hyperbole. Admit it, that prior posting about "incompetent idiot" was meaningless tribble. And admit it, it was directed at inventors seeking a patent.
And I haven't mistaken anything as to burden of proof and financial burden. The application itself is supposed to explain in the spec why the invention is novel and useful, how it solves a particular problem, as well as how to practice it. Often it will address particular known prior art and argue how the invention is novel and non-obvious. Isn't this an argument that right out of the starting block the patent applicant has to persuade the examiner that he has something patentable?

[Malcolm Mooney]

pds

"Let me guess, you are so good with the clients you are your firm's biggest rainmaker, which frees you up from the everyday drudgery of dealing with the patent office (which is my lot in life) and allows you all the free time in the world to post of this board."

LOL, coming from Dr. Verbosity himself. Earlier, the key word was "unpredictable". Now it's "pissing contest." Well, we all know who has the longest comment.

Please excuse me while I find an umbrella.

[anon]

pds and Fredric,

I must disagree with your answers. First, the section 102 point. Yes, that is what the CCPA and Federal Circuit hold. Yes, it is a plausible interpretation of the statute. But it is not the ONLY plausible interpretation of the statute, and the Supreme Court doesn't seem to have ever interpreted it that way, and seems to go the other way (placing the burden on the applicant). And I would say the burden of proof is very much on the table in KSR, so I would not agree that my post is irrelevant to this thread.

I go back to every other context where a statute says: so-and-so shall be entitled to a permit/benefit/license/etc. if he is qualified/disabled/has a well-founded fear/etc. In every one of those, it is the applicant's burden to prove every element with a prima facie case. Why it is patent applicants alone who get the prima facie case with just new and useful? The requirements of a patent are new, useful, and nonobvious, and logically it is the applicant who needs to make an initial case for all three elements.

Section 282 doesn't answer my point either, because my point is focused on the PTO examiner, to whom 282 does not apply.

pds rejects my analogy to a trial judge. But the examiner is no different to many other bureaucrats. Ever applied for anything from the government other than a patent? Even applying for a drivers license, you need to convince a driving examiner that you are skilled enough to drive. And that driving examiner is acting as both judge and prosecutor, in your words, but only if he denies you a license.

And yes I think the applicant should have to find the prior art himself and establish that the invention is not obvious compared to the prior art, because the prior art teaches away, evidences a long felt need for the invention, etc. Again, if you were applying for asylum, you would need to submit evidence that your home country is killing people of your religion.

There is no hindsight problem with a rule that the applicant needs to prove by objective evidence that the invention is nonobvious. There is no more uncertainty than TSM, since it is essentially placing the TSM burden on the other foot. The only difference is that an applicant would have to do much more work, and the examiner much less, and it will be harder to get a patent. My suspicion is that prosecution lawyers know this and it is why they are fighting like made to save the Fed. Cir. test.

[Tom Kulaga]

Anon, you want the burden shifted to the applicant. OK. I do a search. I explain why the prior art does not render the invention obvious. I provide evidence to support my conclusions.

Then what? I made a prima facie case of novelty and non-obviousness. What criteria should the PTO use to reject my application? That is what I see as a major issue. Should the examiner's opinion trump my submittal or do I easily obtain my patent?

With current examining practice, the examiner often tries to shift the burden of proof to the applicant by not stating reasons for their rejection. Because I know my clients will not appeal, in order to have a hope of obtaining allowance I sometimes assume the burden of supplying proof that the invention is not obvious. (This is after I make the procedural arguments.) So, after receiving an office action I sometimes find myself doing what you advocate.

But, what should be the examiner's response? Should he say, "Good job, here is your patent number"? Should the examiner be required to give reasons for rejecting my prima facie case? Or, can the examiner just state that the evidence was not persuasive?

I have submitted affidavits defining a PHOSITA and providing analysis and evidence of non-obviousness of the art. Many times the examiner moots the original rejection and then cites similar art in a new rejection. The process repeats.

The problem with proving a negative, as you suggest by having the applicants assume the initial burden of proving the invention is not obvious, is that the examiner need only find one piece of art and reject the claims on that basis. Then, we are right back to where we are today. I have to prove that the newly cited art does not render the invention obvious. Regardless of who has the burden of proof, we need criteria that defines what is patentable and what is not. Is TSR that criteria? If so, let's enforce it.

[Malcolm Mooney]

pds, tugging at our heartstrings again:

"Some small-time inventor spends hundreds of hours perfect his or her invention, maybe five or ten thousand dollars to have a patent attorney prepare the application, and an examiner rejects the application based upon a couple hours of searching and a one paragraph motivation to combine based upon "reasonable references," which took about 15 minutes to write."

I'd advise not watching "American Idol," pds. It might break your heart.

"If the examiners can use common knowledge to generate their obviousness rejections, why cannot attorneys do the same?"

Hint: what is the ratio of Examiners to attorneys?